October 22, 2021 at 6:59 am
Filling of oppositions is now possible in all 8 jurisdictions we operate in.
New TM applications are examined on absolute grounds by local IPOs, then published, and open for 3rd party oppositions based on relative grounds.
The non-extendable term is usually 3 months from publication or 90 days (MK & ME).
In the text of the opposition, filed through a local agent, the owner of the older right argues high degree of similarity of the newer right, asking for it to be rejected partly or as a whole.
The IPO will then present this opposition request to the owner of the newer right, who will also be able to put their argument in writing and finally the IPO will make a decision.
Here are a few considerations to keep in mind:
1. Use of the older right – most of the IP laws explicitly predict the right of the owner of the newer right to request proof of use on the market of the older right – this can greatly impact the outcome, because without proof of use (when requested) the opposition will be thrown out.
2. Serbian IPO can protest a registration based on relative grounds – They do this through official action, although they included possibility of oppositions back in February 2020.
The current system is a hybrid of the situation before this change (when the IPO examined all applications for absolute and relative grounds) and the possibility of a 3rd party oppositions, too.
Overcoming this can be somewhat different, as the other side is not the owner of the older right – so Letters of consent and/or cancellation actions all come into play.
Also, the reply and subsequent Official Actions will be between the owner and the IPO itself, the owner of the older right will not be informed or often even necessarily know about the whole situation.
3. When no reply is given – As long as the opposition itself is filed according to the law, the IPOs will accept it if no reply is provided in the time frame the local law predicts (from 60 days to 3 months; again, non-extendable), rejecting the registration partly or as a whole, depending on the scope of the opposition.
4. Hearings are possible, but seldom held
Almost all opposition matters are fought and resolved using paper, but the laws do predict the ability of the local Examiner to hold a hearing.
5. Appeals – If either party is not pleased with the outcome, it is possible to file an appeal, which is decided by board of appeal at the IPO or usually at the Ministry, followed (most often) by the possibility to file a lawsuit before the Administrative Court if the results of the appeal is also unsatisfactory.
Unless new information is presented along with convincing proof of why it was not presented at an earlier stage of the proceedings, it is highly likely that the original Decision will be upheld.