Trademark opposition is a process to challenge another’s trademark application. Different countries have different requirements, but all involve petitions, trials, and arguments. Trademark owners are responsible for protecting their trademarks, and opposition can be an important part of the trademark monitoring process. The opposition process is stricter in the UK and throughout the European Union. Often, parties involved in a trademark opposition resolve the dispute, but if it goes to trial, the trademark application will either be canceled or rejected. It’s important to know the rules that govern trademark oppositions and engage the services of a solicitor or trademark attorney familiar with local rules and procedures.
Trademark opposition is a process by which an individual or entity may challenge another’s trademark application. Trademarks are rights that protect words, phrases and images associated with the marketing of goods or services. Almost every country in the world has a process for assigning and administering trademark rights. Enabling oppositions is an important part of that process. Different countries have different requirements for what must be done to file a trademark opposition, but all involve carefully timed petitions, trials and arguments.
One of the most important aspects of trademark ownership is the exclusive right to use a trademark in connection with a particular good or service. Trademark owners are responsible for protecting their trademarks and opposition can be an important part of the trademark monitoring process. In all countries, trademark opposition is a way for proactive trademark owners to see that a trademark close to theirs has been applied for, file an opposition, and prevent the application from being successful. Opposition is a first way to challenge a trademark without having to wait for that trademark to be used.
The requirements for filing and winning a trademark opposition vary according to local laws. In the United States, trademark oppositions are filed with the Trademark Trial and Appeal Board, which is a branch of the Patent and Trademark Office (PTO). The PTO publishes all pending trademark applications in print and online. There are stringent filing deadlines and documentation requirements that must be met to successfully oppose a trademark in the United States, but all the applicant needs in terms of material opposition is the belief that the trademark applied for, if granted, it would cause him harm. Such harm usually has to be related to some essential element of the brand, such as likelihood of confusion or dilution in the market.
The process is similar in both Canada and Australia. Oppositions are filed with the national trade mark offices, IP Australia and Canadian Intellectual Property Office respectively, after publication. As is true in the United States, anyone can file an opposition to an Australian or Canadian trade mark, as long as they believe it will be harmed in some way. Australia also allows objections based on non-use. An opposition for non-use assumes that since a registered trade mark has not been actively used, it should be cancelled.
The opposition process is stricter in the UK and throughout the European Union. To file a trademark opposition in one of these jurisdictions, a person must first own a registered trademark that he or she believes could be infringed, diluted or otherwise damaged if the application is approved. The one exception is that the UK will allow anyone, whether or not a registered trade mark owner, to oppose a trade mark application on ‘absolute’ grounds. An outright objection argues that the proposed mark is too generic and should be open to use by anyone. An application to register ‘milk’ as a trade mark for milk drinks, for example, could be opposed by anyone in the UK on absolute grounds.
Often, the parties involved in a trade mark opposition resolve the dispute, usually by agreeing on the parameters in which the claimed trade mark can be used. If the opposition goes to trial, the trade mark application will either be canceled or the reviewing officers will rule that the opposition should be rejected. Each trade mark office has its own rules on who bears the costs of the proceedings and whether a party who launches an unsuccessful opposition should be penalized financially.
Trademark opposition is an important part of the trademark monitoring and trademark application process, but it’s important to know the rules that govern. Defeating your opponents and beating them depends as much on the format as on the strategy. Trademark oppositions can be both initiated and defended individually, but it is usually best to engage the services of a solicitor or trademark attorney who is familiar with local rules and procedures.
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