Trademark opposition and invalidation proceedings are complex legal matters that require the attention of sharp, knowledgeable attorneys. When a client is faced with issues concerning registration of its own trademarks or of the registration of another party, MARKS IP Law Firm guides the client through the process of evaluating available options in an effort to resolve the matter in a way that is most beneficial to the client.
A trademark opposition is a proceeding in which a third party can oppose a newly registered trademark under Article 43bis of the Trade Mark Law. For example, once a trademark is newly registered by JPO, this fact is published in the Official Gazette of Trade Marks immediately after it is actually registered. This kicks off a two (2) month period known as the ‘opposition period’ during which other parties are then given an opportunity to ‘oppose’ the registration of the trademark.
In many ways, an opposition proceeding is like a ‘re-examination’ that is conducted by the Opposition Board of JPO. Parties file evidence and make legal submissions about whether the trademark should or should not be registered. Most number of oppositions are decided solely based on written submissions.
Cancellation decision by the Opposition Board makes the trademark lose its exclusive right retroactively.
A trademark invalidation is inter partes proceeding in which a party having legal interest to the result can null a trademark registration under Article 46 of the Trade Mark Law.
If the registration is less than five years old, the party challenging the trademark rights can rely on any ground that could have prevented registration initially. Likelihood of confusion and descriptiveness are the most common grounds asserted to invalidate trademark rights. Invalidation decision by the Trial Board of JPO makes the trademark lose its exclusive right retroactively in principle.
Statistically speaking, trademark opposition becomes harder to remove trademark from registration than invalidation.