November 24, 2021 at 3:20 pm
Each month we answer 3-5 questions our clients most often have and share it in our Q&A series.
Q1: Who can file an opposition?
Oppositions are filed by the owner of the older right and strangely, the Serbian IPO through Official Action.
They have included the institution of oppositions in February 2020, but they retain the right to examine the applications on relative grounds before publication.
Q2: What are the deadlines for filing one or replying to one and can these be extended?
The deadline to file the opposition against a younger right is 3 months from the publication of the application or 90 days in ME and MK.
The time frame for reply to the opposition against your right, is also non-extendable and depending on the jurisdiction varies from 60 days to 3 months – this is always noted on the IPO’s notification.
Q3: Can we present more arguments at a later date?
As the deadlines are non-extendable, sometimes not enough time exists to prepare all the documentation and argumentation – most jurisdictions will consider a later filed document without any obligation to do so (e.g. in Bosnia, absolutely no additional documents can be filed).
Q4: What if we want to save costs and we do not reply to the opposition against our application?
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, rejecting the registration partly or as a whole, depending on the scope of the opposition itself.
Q5: Can we file an opposition based on our older right that we no longer use?
Not really – The laws of ME, HR, BA and KS explicitly list the ‘defence in opposition proceedings by arguing non-use’ meaning that the other side has the right to demand proof of use in the past 5 years (if the prior right has been registered for that long).
However, this would not be advisable in any jurisdiction – the opposition itself gives the ‘legally interested’ status to the owner of the younger right , which is necessary to file a motion for cancellation due to non-use.
Thus, it would be reasonably expected that they would be advised to do so, even if not explicitly written in the law; the opposition proceedings would halt until the Decision on the cancellation motion is reached.
