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How to protect our trademark? How and on what basis can we challenge the claim of rights to it if we have earlier rights and have already registered our trademark?
The opposition procedure is one in which a third party requests the office with which an application for trademark registration has been filed to reject the application, arguing that it possesses prior rights.
The grounds on which the third party may rely in the opposition procedure are called relative grounds for refusal.
What are the three main requirements that must be present cumulatively in order to register a sign as a trademark?
• The sign must be distinctive;
• The sign must not be prohibited;
• And it must still be free – this means not being subject to prior rights owned by third parties.
The absence of one of these conditions constitutes a ground for refusal of registration of the trademark. In this case, there are two absolute and one relative ground for refusal.
What is the difference between absolute and relative grounds for refusal?
Absolute and relative grounds for refusal are frequently used concepts in law, which can be summarized as follows - the registration office is obliged to monitor the presence of absolute grounds ex officio (as after publication of the application, the office may be notified of the presence of such absolute grounds for refusal by any third natural or legal person), and the office shall rule on the relative ground only upon notification by a third interested person. That is, the experts who receive the application for registration of the trademark and who must decide whether to grant it or not, apply ex officio the two absolute grounds for refusal, which are - the sign must be distinctive and yes not be banned.
It follows that we need to monitor and be vigilant about filing applications for registration of trademarks that could conflict with our earlier rights. This is because we should keep in mind that the period for filing an opposition is relatively short – it is only 3 months, counting from the date of publication of the application in the relevant office – for national trademarks this will be the Patent Office (Art. 52 of the Trademarks Act), and for EU trademarks – before the EUIPO (Art. 46 of Regulation (EU) 2017/1001).
In order to understand the relative grounds for refusal of registration that the third party interested, the holder of earlier rights, may invoke in an opposition procedure, in the following lines we will analyze the regulatory framework in the applicable Regulation (EU) 2017/1001.
Article 8 of the Regulation contains the relative grounds for refusal of registration, those that allow us to invoke our earlier rights and prevent the registration of the mark in many cases.
• Paragraph 1 of Article 8 provides that the proprietor of an earlier trade mark may oppose the registration of an applied-for trade mark where that trade mark is identical to the earlier trade mark and where the goods and services for which registration is sought are identical to the goods and services for which the earlier trade mark is protected. A situation which is called in practice double identity. The following point (b) provides for a hypothesis in which, due to the identity or similarity with the earlier mark and due to the identity or the similarity of the goods/services that the two marks designate, there is likelihood of confusion in the minds of people in the territory in which the earlier mark is protected. This likelihood of confusion, according to the text, includes the possibility of association with the earlier mark.
• Paragraph 3 of Article 8 gives the proprietor of the mark the possibility to prevent the registration of a mark when it is requested by agent/representative of the trademark without the consent of the trademark owner himself (unless the agent/representative in question justifies his actions).
• Paragraph 4 of Article 8 provides for the possibility of opposition by the owner of an unregistered trademark or other sign that is used in the course of trade with a scope greater than local, where and insofar as, under the law of the Union or of the Member State, as applicable, the rights in respect of that sign were acquired before the date of filing of the application for an EU trade mark or by virtue of the priority date claimed in the application for registration of the EU trade mark and where that sign confers on the proprietor the right to prohibit the use of a more recent trade mark.
• Paragraph 5 of Article 8 allows the holder of a registered earlier mark to oppose the registration of the mark so applied for, where it is identical or similar to an earlier mark, regardless whether the goods/services for which the application was filed are identical, similar or not similar when this mark is used fame (reputation) in the Union (or in the case of an earlier national trade mark – with a reputation in the relevant Member State) and if the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
• Paragraph 6 of Article 8, on the other hand, gives the opportunity to the authorized persons, under the applicable law, to exercise rights arising from an appellation of origin or geographical indication to oppose the registration of a later trademark application, where, under the applicable law, such an application for an appellation of origin or geographical indication has already been made before the date of filing of the trademark application and where the same appellation of origin or geographical indication grants the holder the right to prohibit the use of a subsequent trademark.
Briefly examining these grounds for refusal of registration, it becomes clear that trademark law does not grant us a monopoly (as we can figuratively say we have in copyright), but rather gives us rights over the goods or services that must be clearly and precisely presented in the application for registration. As an example, we can consider the word mark Lotus, best known as a brand of biscuits, but in fact there is one registered for cars, for software, for toilet paper, etc.
Another example is the Dove brand, which is primarily associated with cosmetics products - however, there is also a registered trademark for chocolates.
The text of Article 8 emphasizes certain concepts such as similarity of signs, likelihood of confusion, agent/representative, reputation, etc.
These are key concepts in practice, which we will illustrate with specific examples in the next article on our blog.
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