In this second newsletter, we look at the revised trade mark opposition procedure. The procedure does not suggest a formalized “cooling-off” period and specific proof of use requirements for the opponent, but still, the procedure has been significantly improved and provides a better balance of the conflicting interests between trade mark applicant and opponent.
Please also feel free to download the flowchart in PDF by clicking on the link here.
Transitional Provisions of the IP law adopted on 21 July (Law) do not provide for specific regulation on the trade mark opposition procedure. Under a general rule stipulated by the Law, the new regulations for trade marks are in effect the next day after the official publication of the Law (i.e. as of 16 August 2020) (Effective Date). All trade mark laws and regulations which are not yet amended to comply with the Law shall remain in effect to the extent they do not contradict the Law. The relevant trade mark laws and regulations are expected to be aligned with the Law within six months as of the Effective Date.
Under the reasonable interpretation of the Transitional Provisions of the Law:
- the amended trade mark opposition procedure applies to those trade mark applications which have been filed at the Effective Date. When it comes to those trade mark applications in relation to which no formal examination has been completed at the Effective Date, information about trade mark applications shall be published in the official IP Bulletin as prescribed by the Law.
- When it comes to those trade mark applications in relation to which formal examination has been completed at the Effective Date, no bibliographic information concerning the trade mark application shall be published in the official IP Bulletin. In this regard, rights holders can continue to rely on preferable watching service providers or regularly check the publicly available information on potentially infringing trade mark applications at the web-portal of the Ukrainian IP Office (IPO).
- an opponent can rely on grounds of refusal (grounds of opposition) which have been in effect at the date of filing an infringing trade mark application.
The deadline for filing an opposition against the trade mark application was not sufficiently clear in Ukraine. A trade mark application could be opposed by an interested person during the whole period of examination but not later than 5 days before final decision on its registrability / non-registrability is made by the IPO. Since there is no obligation for the IPO to examine the trade mark application/register trade mark within a certain timeframe, it was a challenging task to oppose the infringing trade mark application in time. Such vague regulation was a breeding ground for manipulations and had been increasing corruption risks in high profile cases.
The Law provides for more clarity in respect of the opposition deadline and stipulates that any interested person has the right to oppose a trade mark application within three months as of the date of the official publication of the information concerning the application in the official IP bulletin. Three months period is not extendable.
A trade mark application filed under the national procedure is eligible for publication in the official IP bulletin when its filing date is established and a filing fee is properly paid. International registration or subsequent designation of the international registration under the Madrid system is eligible for publication in the official IP bulletin after receipt of the relevant documents from the WIPO by the IPO. The Law does not specify during which term information about international registration or subsequent designation of international registration should be published in the IP Bulletin.
Requirements to opposition
The Law does not provide for that the IPO must examine the opposition for admissibility, neither provides that it should be rejected if there are deficiencies. We expect that the requirements to the opposition will be set by the Ministry for Development of Economy, Trade and Agriculture of Ukraine within six months from the Effective Date as the Law virtually requires.
The filed opposition will be considered by the IP Office at the stage of substantive examination of the trade mark application. The period between filing an opposition at the stage of the formal examination and when the substantive examination is formally started can be treated as a sort of unformalized cooling off period when the parties can negotiate and agree on (i) trade mark withdrawal or (iii) restrict the scope of application for which the registration is sought, or (iii) take other actions to resolve the matter amicably.
The IPO sends a copy of the opposition to the applicant. The applicant has the right to provide observations on the opposition. For national trade mark applications, an applicant can provide observations within two months as of receipt of the copy. For international trade mark registrations, the applicant can provide observations within three months from dispatching a provisional refusal accompanied by the opposition to the WIPO. Both timelines are not extendable.
The IPO should consider the opposition within the grounds of opposition an opponent relied upon as well as taking into account a response from the applicant (if any). Results of consideration of the filed opposition should be provided in the final decision concerning the application.
The Law does not oblige the IPO to provide a justified argumentation concerning the opposition filed. It may be that the IPO will continue providing just the list of documents and website/webpage links it has relied on when deciding on the registrability of a certain mark.
Provisional refusal within opposition procedure
Issuing a notification of provisional refusal within the old opposition procedure was an established practice of the IPO before the Law (though unformalized). It was widely used in those cases where (i) no response to the opposition has been provided by the trade mark applicant and where an examiner considers reasonable to give the last chance for the trade mark applicant and/or (ii) if the examiner has some doubts concerning the application and would like to obtain additional argumentation and evidence from the applicant.
The amended Trade Mark Law now provides for a formalized discretion for the IPO to issue a notification of provisional refusal as a result of the substantive examination and in case an opposition is lodged (if any is lodged). It is expected that the IPO will continue to practice the same approach toward provisional refusals within the opposition procedure.
Importantly, the Law also introduces a limitation concerning the number of provisional refusals. Only one provisional refusal is now possible within the trade mark examination procedure. Before the Law, several provisional refusals may take place, especially in high profile cases.
In case the opposition is filed, but the IPO decides to register a trade mark for all or part of the goods and/or services for which the registration is sought, trade mark examination should be suspended by the IPO until two months deadline for filing an appeal to the IPO’s Appeal Board is expired for the opponent.
In its turn, if the applicant disagrees with the IPO’s final decision, it can appeal the decision either to the Appeal Board or to the court within a two-month term. It remains to be seen how the practice will develop in case the applicant challenges the IPO’s decision to the court and, at the same time, the opponent appeals the decision to the Appeal Board.
The deadline for filing the appeal is calculated from the date of receiving a copy of the IPO’s decision. The two-month timeline is not extendable.
In case the appeal is lodged by the opponent, the Appeal Board should immediately notify the trade mark applicant and provide a copy of the appeal to the applicant. The trade mark applicant has the right to provide justified observations on the appeal. The justified observations should be provided under the procedure and within the deadline stipulated by the regulation approved by the Appeal Board.
In case the appeal is satisfied by the Appeal Board, only 50% of the opposition fee can be refunded.
As per the amended trade mark opposition procedure, a copy of the final decision of the Appeal Board also should be provided to the trade mark applicant. In such case, the applicant will not have the right for the second appeal to the Appeal Board but will have the right to challenge the decision to the court.
Court case stage
If the opponent disagrees with decision of the Appeal Board, it has the right to challenge such decision to the court. The same right is vested with the trade mark applicant. A lawsuit should be filed within two months from the date of receipt of the Appeal Board’s decision. This two-month term is not extendable.
For further information, please contact Oleg Klymchuk (email@example.com).
Information contained in this overview is for general information purposes only, does not constitute legal or other professional advice, and should not be relied upon as a substitute for specific professional advice tailored to particular circumstances.