June 29, 2020 at 2:46 pm
Q&A II – Ex- Yu: Resolving conflict
Each month we answer 3-5 questions our clients most often have and share it in our Q&A series.
Here we are going to focus on questions in relation to oppositions, Provisional refusals and cancellation actions (due to non-use and annulment).
Q: Are Letters of Consent accepted?
In most jurisdictions, in order for conflict to occur an action has to be taken against the later IP right, so it is understandable that the LoC is out of the question.
In Serbia, however, where the IPO continues to hold ex-officio right to reject new applications (national and IRs) due to relative grounds, it is reasonable to expect this ‘conflict’ to be resolved by submitting a Letter of Consent of the owner of the prior right.
The Letter should always be on the company letterhead and supplied with company seal and presented in original.
Q: Is co-existence of other similar brands on the market viable as defence in oppositions?
No. If a conflict occurs before the IPO or the Court the owner of the later right cannot successfully defend themselves by pointing out other similar products that could also constitute infringement.
This is because the owner of the prior right may not know about them yet, they are not legally bound to go after every infringement or they may have the policy of pursuing only large scale infringements – this is their right, so such defence based on local laws is ineffective.
Q: When is proof of use required and what can it be?
When filing oppositions, the owner of the later right, during the procedure can always request the proof of use. Today, such proof can sometimes be confusing, as people can perceive brands and ‘use them’ over internet (e.g. online booking of a holiday from Kosovo in Egypt, although Kosovo itself does not have such hotel brand and additionally a possibility to gain member points, etc.).
Proof of use still has to be tied to the market itself – so the possibility of ‘online use’ is still inadmissible, neither are ads and brochures alone – as they still do not let you experience the product or the service advertised.
Usually proof that we submit are simple store receipts showing that date and products bought, and often we are supplied with paperwork showing the amounts of products shipped/sold in the past years on the market, by our clients.
Proof is tied to use on the market in the past 5 years and cannot be requested if 5 years have not passed from the registration date.
With cancellation action (annulment) the situation is a little bit different – proof of use is filed alongside the motion for annulment.
Q: Is it possible to file oppositions based on other IP rights (e.g. copyright, geographical origin…)
No – oppositions are reserved for relative grounds of refusal.
In principle, these matters are solved by filing the observation to the IPO (in the same time frame as opposition) – further details do vary from jurisdictions to jurisdiction.