Trademark opposition
Part of the process for registering a trademark includes publication of the trademark for opposition purposes. Following trademark publication or advertisement, certain third parties can oppose the application to block the trademark from being registered.
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Trademark opposition - opposing registration of trademarks in Ireland and the EU
When a trademark is advertised as part of the trademark registration process, it is open for opposition by third parties and other owners of registered trademarks.
What is trademark opposition ?
How does trademark opposition happen? A competitor may apply to register a trademark that is similar to a registered trademark. On occasions, the application for trademark registration passes through the examination period, and is then published for advertisement. If no trademark opposition is lodged, the trademark will progress to trademark registration. The main reason the proposed trademark registration is advertised is to allow competitors, and other trademark owners an opportunity to oppose or object to the trademark registration. The Trade Marks Act, 1996, (and the EU trademark regulations) allows a period of 3 months for filing a trademark opposition, starting from the date a trademark is advertised for trademark registration. Usually, speed is of the essence, and when a party first becomes aware that it intends to oppose trademark registration, it should quickly notify the other party as soon as possible that it intends to file a notice of opposition to its trademark.
Registered trademarks are governed by trade marks laws - so is trademark opposition
Registered trademarks in Ireland hold a strong position on account of the nature of trademark registration. Registered trademarks hold title, that the courts tend to uphold. However, in cases of trademark opposition, the outcome can depend on the earlier trademark rights, the trademark classifications involved, the similarity of the goods and services, and the characteristics of the trademarks involved. Some of the issues in trademark opposition cases include: -
- how closely do the trademarks resemble each other?
- whose trademark is registered, and therefore, protected?
- how similar are the goods and services being traded?
- is there a likelihood of confusion between the trademarks?
- how strong the grounds are for trademark opposition.
Trademark opposition is a legal process
Initiating procedures to oppose registration of a trademark is like starting a formal legal process. The procedures are governed by the Trade Marks Act, 1996 in Ireland and by other EU trademarks legislation (see web page trademark law). Examples of situations where opposition of trademark registration may be difficult to sustain include trademarks that may be questionable as to certain characteristics, for example: -
- is the registered trademark eligible for trademark registration?
- how distinctive is the registered trademark?
- are there any limitations imposed in the registration?
- are there any earlier trademark rights involved?
- are there any differing trademark rights involved?
- is the registered trademark capable of being revoked or invalidated?
- there may be no grounds for trademark opposition if the holder of a registered trademark has not used the trademark during a certain period.
Trademark opposition often requires careful consideration
Once a trademark opposition has been filed, the application for registration is put through an additional process that may or may not prevent the registration from occurring.
So it may be very worthwhile using trademark opposition or trademark monitoring as a suitable additional tool for trademark protection. Opposing the registration of a trademark can involve a wide range of matters, some of which are embodied into the following:
- what are the grounds of the trademark registration opposition?
- what claims are included in the trademark opposition case?
- what trademark rights are currently held?
- how strong is the case for trademark opposition?
- how strong is the case for defending the opposition to trademark registration?
In certain cases, it is useful to obtain trademark advice when dealing with trademark opposition proceedings, or when faced with a claim of trademark infringement. We can provide you with an opinion concerning such trademark opposition or infringement matters, before you decide on which course of action is most suitable to your trademark case.
Visit our Da Vinci code copyright case page to see whether copyright or trademark registration is stronger. To see more about registering trademarks for films, television programmes or cartoon characters, go to the character trademarks merchandising page.
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