In our practice we find that the IPOs mostly frequently react to – descriptiveness, citing a year of establishment (as it can confuse the public about quality of the goods; tradition implying superior product) and implying the goods are of certain geographical origin (e.g. Cuban rum).
So, what can you do when faced with the IPO’s Official action, based on absolute grounds?
Depending on the IPO’s notification – the list of goods & services can be limited, proof of year of establishment filed, argumentation showing similarly ‘descriptive’ marks registered provided,…
In reality, most of our local IPOs, with the exception of the Serbian, rarely even bother with examination of the absolute grounds – unless it is a national emblem or a morality issue (which itself rarely comes up).
This leads to the possibility that on occasion, you may deem a published TM application to be against absolute grounds for refusal.
As you know, oppositions are based only on relative grounds, so this method cannot be used in these circumstances.
And as mentioned above, the local IPOs are lax about enforcing these rules.
Thus, not so rarely we have clients contact us to find out what action they can take.
Local laws allow for filing of observation/opinion based on absolute grounds.
Filing an opinion or observation does not make one a party in the process – so they would not be notified of the IPO’s Decision or have the right to an appeal.
Depending on a case – sometimes (and most effectively) we can file an opposition AND an observation/opinion to the IPO.
Similarities in marks can be argued either way, absolute grounds are usually more factual and easier to determine.
With the opposition the situation is different than when only filing an opinion – the communication exist throughout the process.
Chances of such application becoming a registration would be less likely through double approach; again, when applicable.
