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.
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.
n 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.
Now, we are going to focus on steps to take when the owner’s rights are infringed upon (meaning used without consent) – either on the borders, within the market or before the Courts.
Q: What are the steps when fake goods are being imported into a market?
We have already written about the importance of Customs surveillance petition on our website, so our answer will focus on practical steps – the Customs has an ex-officio duty to inform the IP owner of any seized goods – this is most easily done via local representative before the IPO (meaning that IR owners are sometimes ignored or it takes a very long time to contact them). Still, this ex officio right is made much easier and smooth via petition that the IP owner files with the Custom’s IP department enabling them to spot fake goods right away.
In any case, once the owner is informed of the seizure – they will have a very short term to decide how to proceed – 4 days, and to file the necessary paperwork. Only then are they allowed to examine the goods, take photos and either request the destruction of goods (if the importer does not object) or go to the Court with the same aim – to get the goods destroyed.
Once more, we want to stress the importance of the petition before the Customs that any IP owner (even based on an application) can file – which allows longer time frame to react, informs the Customs about the local agent to contact in cases of International Registrations and provides invaluable information to the people at the boarders on how to spot fakes.
Q: What can we do if the goods are already on the market (either entering unnoticed by the Customs or made within the particular country)?
In this case, again, Market inspectorate has an ex-officio duty to seize such products.
Depending on the case, criminal charges are often held, but the IP owner can simply request the destruction of such goods, again, if the opposite party has not objected – otherwise Court proceedings are necessary.
Additionally, it is possible to alert the Ministry if the goods are found on the market and request their assistance, as only they can seize such goods and take action.
Q: Which lawsuits are available in the IP world?
Trade Mark laws in our jurisdictions recognize:
- Lawsuit against infringement (this enables the owner, applicant or sometimes the licensee to file a lawsuit before the Court – we do not have specialized IP Courts or divisions- in order to stop such behaviour, seize goods, receive damages and request publication of such verdict. )
- Lawsuit challenging the trade mark (When the application is filed against the principle of a good faith and honesty and/or further registered, person whose legal interest has been violated, may request the Court to declare them the applicant, or the right’s proprietor.
This lawsuit can also be filed in cases when the application is in breach of contract or legal obligation.
Further, in cases where a sign is being used to mark goods and/or services, for which another entity has filed an application or has registration their rights, the person/company using the sign may request the Court to declare them the applicant or the right’s proprietor, providing proof that the sign in question became well-known, within the meaning of Article 6bis of the Paris Convention before the other entity has filed their application or registered this sign as a trade mark.
This lawsuit can only be filed if no longer than 5 years have passed from the date of the registration at the IPO.