Most nations with fully-developed trademark legal frameworks allow for opposition proceedings with regard to newly filed applications for trademarks. Most jurisdictions, like the United States, provide that opposition proceedings shall occur during the registration process, prior to issuance of the relevant Certificate of Registration. However, about 10 jurisdictions allow for opposition proceedings ONLY post-grant of registration. Of those few, many — e.g., Germany, Denmark, Poland, etc. — are within the European Union and thus observe their own domestic trademark laws and the EU system. As such, for those nations, two opposition proceedings are available and many trademark practitioners avail themselves of both.
Japan, however, is an outlier, having an opposition system that is only post-registration. Here are a few thoughts on Japan’s post-registration opposition proceedings.
International Trademark Law: 1996-1997 Changing Japanese Trademark Law
Prior to 1997, Japan adhered to the traditional pre-registration model for opposition proceedings. However, in 1996, the Japan Trademark Office (“JPO”) had a significant backlog of applications and, at that time, Japan was considering signing the Madrid Protocols. Under the Madrid Protocols, a certain speed of application process was expected of all signatory nations. Japan needed a method of clearing the backlog and of speeding trademark application processing. Their focus turned to changing the system of conducting opposition proceedings.
In general, pre-registration opposition proceedings have the obvious and expected result of extending the length of the examination period.
Further, pre-registration oppositions had/have two advantages that provide incentives the filing of such proceedings. First, from a competitive standpoint, it is better to PREVENT a competing mark from being registered rather than fighting to have a mark revoked or canceled. Preventing registration means that the competing mark is never used in commerce and never threatens sales or market share. By contrast, in general, a mark can be used in commerce during the pendency of any litigation that is initiated to cancel or revoke a mark. Because litigation is time-consuming, there is business risk involved in post-registration opposition proceedings. Second, because opposition proceedings are administrative in nature, they are less expensive as compared to formal court litigation.
Taken together, these two factors — the preventative goal and less expense — have the effect of increasing the number of opposition proceedings initiated in a system that allows pre-rant-of-registration oppositions.
The JPO took the position that switching to a post-registration system of opposition would decrease the number of opposition proceedings and thereby increase the speed of registration. And, indeed, statistics support that conclusion. In the three years from 1992 to 1994, there were 402,500 opposition proceedings filed. After Japan moved to a post-registration opposition system, from 2003 to 2005, there were only 298,873 opposition proceedings filed. See here (page 7).
Aside from reducing the number of oppositions, there were other streamlining effects including:
- No examiner involvement after grant — examiners freed to proceed to other applications
- Post-grant proceedings administratively distinguished for budgetary, reporting and statistical purposes
- Only one publication is needed — two publications are generally required under a pre-grant-of-registration opposition systems
- Examiner “mistakes” in granting registration are “fixed” by a different administrative department
- Administrative ease of changing “registered” to “canceled” on the Register if post-grant opposition proceedings succeed
From the vantage point of bureaucratic administration, there were some obvious advantages obtained by moving to a post-registration system of opposition.
International Trademark Law: Other Advantages of Post-Registration Oppositions
There were also advantages to Japanese businesses. First, trademark registration became streamlined and became relatively quick. At the very least, the opposition period was/is removed from the “wait time.” Even if processing by trademark examiners still takes several months, an applicant no longer has to wait during the opposition period. Once the examiner has said “yes,” the mark can be used in commerce with the attendant legal protections.
This is important because many entrepreneurs in fast-paced, quickly evolving market sectors feel that trademarks are for “dinosaur industries.” In some sectors of the economy — computing, smart phones, gaming, etc. — any given product might have short window of market opportunity before being overtaken by new innovations and advances in the technology. Indeed, that is sometimes the market plan — put this version out now with the next version already in process. Thus, having to wait 18 months for a trademark registration is unacceptable and certainly limits the usefulness of a trademark.
Another business advantage is that a post-registration opposition system allows for a more narrow challenge. Many trademark applicants apply for a mark with respect to multiple classes of goods and/or services. However, maybe there is an opposition to only one class of good or services in the application. There is a well-understood concept that a mark might be “confusingly similar” only if the mark is being used for a similar class of goods that might be found in similar channels of commerce. There is little likelihood of confusion for RITZ with respect to hotels in contrast to RITZ KIDS used for toy dolls.
Under a pre-registration opposition system, a challenger must challenge the application and this suspends possible use of the new proposed mark for all classes of goods and services. By contrast, post-registration opposition systems allow for a more focused challenge which allows use of the mark to continue in the marketplace for the other classes that are not being challenged.
International Trademark Law: Practical Issues With a Post-Registration Opposition System
As a practical matter, a post-registration opposition system does not change how a trademark owner should operate in the marketplace with respect to IP protection. Under either system, the following are necessary:
- Constant monitoring of the official “Gazette” where new marks are published
- Constant monitoring of the market for infringing marks
- Use of cease and desist letters and notices of claimed infringement
- Willingness to engage in aggressive litigation at the opposition and/or court level
- Retention of skilled, experienced and dedicated trademark attorneys
Contact Revision Legal
If you need more information on trademark law or have other questions about trademarks, contact the lawyers at Revision Legal. Revision Legal offers a wide array of legal services related to internet law, intellectual property and business law, including all services related to trademarks. We can be reached by email or by calling us at 855-473-8474.
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