Trademark Opposition Proceedings
Eva Troiani law firm can assist you also in trademark opposition proceedings.
What are the trademark opposition proceedings? Is it always possible to file a trademark opposition? Is it something existing worldwide and is it identical in all the States? Let’s try to give you some answers.
In this post we talk about:
What trademark opposition proceedings are
Trademark opposition allows the proprietor of a trademark (and sometimes also the exclusive licensee of a trademark and the holders of other rights, such the right to the name) to oppose the registration of a later trademark in some cases which are variable according to the State and which will be studied by examining the relevant legislation.
It is usually possible to lodge an opposition against trademarks which are identical with or similar to yours, which have been filed for identical or similar products or services and that may create confusion in the public.
Through the opposition the opposing party asks the examiner not to grant the registration of the opposed trademark.
In some States the opposition can be filed only after the registration, with the aim of cancelling the registration.
Is it always possible to file an opposition?
No, it is not always possible to file an opposition.
The law provides for a deadline, usually short, within which the opposition can be filed; therefore, for example, if you wish to file an opposition against an Italian or European Union trademark, you have to bear in mind that you can do so only within three months from the date of publication of such trademarks on the Trademark Gazette.
Does trademark opposition exist Worlwide with identical rules?
No, some States do not provide for trademark opposition.
At the same time, there are differences concerning possible grounds of the opposition, time of the opposition and to whom the opposition must be filed.
Is it possible to claim compensation if an opposition is won?
The question is generic, so first of all we give you our reply for the case of the Italian opposition (taking place to the UIBM, acronym for the Italian Patent and Trademark Office) and for the EU opposition, taking place to the EUIPO, acronym for the European Union Intellectual Property Office).
Certainly no compensation can be claimed during an opposition proceeding.
Opposition’ s purpose is not obtaining compensation, but preventing a third-party’s trademark – which is deemed to be in conflict with yours- from being registered. During an opposition, a claim for damage is not allowed.
A claim for damages must necessarily be proposed with an action which is autonomous and independent from the opposition.
To complete the answer, we add that no compensation can even be requested elsewhere, if we wish to base our claims only on the acceptance of our opposition. We remind you that a claim for damages, in order to be accepted, always implies that damages have been demonstrated by the subject claiming compensation.
Eva Troiani Law firm: advice and legal assistance
If you want to file a trademark opposition or if you have received a trademark opposition, our firm will give you its advice, firstly through the evaluation of the legal requirements of the opposition.
This examination will take place by considering all the relevant circumstances of the case (for example, the type of the trademark to be opposed: if Italian, European Union or of other states, if your earlier right entitles you to file the opposition; the grounds of the opposition), including a first assessment of the chances of success of the opposition.
The writing of the deeds and the choice of arguments and defensive means requires in-depth knowledge of the matter. The language of opposition is often English language: the Firm is able to give you advices and to write deeds in Italian or English language.
Our assistance takes place on two levels:
- The examination of the legal conditions of the opposition, at the end of which we will give you our opinion not only on the possibility but also on the opportunity to file an opposition, as well as on the possibilities of defense in case your trademark has been opposed;
- Our assistance during the opposition proceedings, which provides for – if possible – tries to amicably solve the matter, updates on the progress of the proceedings, drafting of briefs.
Do you want to file an opposition to a trademark?