July 15

Why and how to respond to opposition?

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Why and how to respond to opposition?

You have received an opposition to your trademark application

You have registered your trademark and unfortunately the Trademark Office has informed you that a third party has filed an opposition against your application. Normally, you have access to the opposition file. You have been able to consult the opposition form as well as the opponent's arguments.

Most often, these arguments have been drafted by a patent attorney or a lawyer. They show the similarities between the trademarks in question, and attempt to demonstrate the existence of a likelihood of confusion.

The best solution in this case is to consult a patent attorney. He or she will tell you the opponent's chances of success and will probably recommend that you respond to the opposition.

 

Why do we have to respond to an opposition?

When your mark was opposed, it is important to respond to the opposition. Indeed, if you do not answer, the Trademark Office (INPI in France) will probably decide in favor of the opponent. Indeed, without arguments to the contrary, the examiner in charge of the decision will follow the opponent's reasoning. Logically, his decision will be more severe than if different points of view had been put forward .

Therefore, it is important to prepare a detailed response in order to make your own defence case. Depending on the case, it is also possible to ask the opponent to furnish proof of use of his mark. Indeed, if it is subject to an obligation to use it, the opponent will have to show that he is indeed exploiting it for the goods and services concerned by the opposition.

It is also very important to note the deadline for submitting arguments in response. If the deadline has passed, the INPI will decide on the basis of the opponent's arguments alone.

 

How to respond to an opposition?

The first step is to challenge the resemblance between the marks. This makes it possible to raise the visual, phonetic and conceptual differences between the two marks in question. The second step is to identify the differences (if any) between the goods and services in question. Thus, a cosmetic product is not equivalent to a pharmaceutical product.

In general, it is preferable to cite previous decisions (issued by the INPI or the European Trademark Office) in order to strengthen one's arguments. But these decisions must be well chosen, otherwise they will be rejected by the Office.

Thus, the INPI frequently rejects irrelevant arguments that do not comply with the legal requirements of the opposition procedure. For example, in the case of word marks, it is unnecessary to point out the differences between the logos as used.

 

So, even if it is perfectly possible to answer an opposition alone...We must be aware that this is a real legal work. To put all the chances on your side, and obtain the rejection of the opposition (total or partial) it is therefore strongly recommended that you seek specialist advice.who is familiar with this type of procedure.

 


Tags

conflict, trademark registration, trademark law, EUIPO, INPI, opposition, monitoring


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