What is an opposition proceeding?
An opposition proceeding is a motion filed by a third party not to register a trademark application.
When is an Opposition filed?
After the Israeli Trademark Office accepts a trademark application, it publishes the application for oppositions in the trademark gazette for a period of three months. During this period, any third party is entitled to file an opposition against the registration of the application.
Who can file an opposition?
An opposition against the registration of a trademark can be filed by any person and/or entity. The right to oppose is not specifically limited only to an interested party.
What are the claims to file an opposition?
- A third party may claim that it is the owner of the mark in the application; or
- A third party may claim that the mark in the application is not eligible for registration under the Israeli trademark ordinance.
What should an opposition include?
An opposition should specify the reason/s for ineligibility for registration of the application in subject. In practice, third parties file oppositions on grounds that the mark in the application in confusingly similar with their registered trademark. In this case, the opposition should include evidence showing the reputation of the registered trademark and the likelihood of consumer confusion between the registered mark and the mark in the application (this can be proved, among others, by presenting the Trademark Office with consumer surveys).
What are my options?
Response to the notice of opposition – upon filing of the opposition, the applicant is required to file its response to the opposition. This course of action will commence a litigation proceeding. Failure to file a response to the notice of opposition is tantamount to abandonment of the application by the applicant.
Withdrawal – in light of the opposition, the applicant may decide to withdraw its application, and file a new trademark application.
Burden of proof
The burden to prove registrability of the trademark application lies on the applicant.
What are the stages and deadlines?
It is possible to file the opposition within three months of the publication of an application. This term is not extendable.
Response – Subsequently to filing the opposition, the applicant has two months to respond to the notice of opposition. This term is extendable.
Evidence – The Opposer will file its evidence within two months from the date of applicant’s response to the notice of opposition. The applicant is required to submit its evidence two months after the submission by the opponent. These terms are extendable.
Evidence by the parties shall be filed in the form of affidavits, supported by the relevant materials.
If the Opposer fails to file its evidence, it will be considered to have waived its opposition. In such case, it is likely that the application be accepted for registration.
Hearing – Upon conclusion of the evidence stage, the Registrar will hold a hearing. Appearing before the Registrar for the hearing is mandatory. During the hearing, the parties or experts on their behalf will be cross-examined on their affidavits or expert opinions, accordingly. In some cases, following the hearing, the Registrar may require the parties to submit written summations.
Decision – Subsequently to the hearing, the Registrar will give his decision. The Decision of the Registrar is appealable to the District Court. An appeal to the District Court can be filed within thirty days from the Registrar’s decision.
At Cohen, Decker, Pex & Brosh law group we decided to found Decker & Ofir, a boutique law firm that specializes in intellectual property law. We believe in providing our clients and the public full access to the vast knowledge our lawyers have acquired through the years. This is why we started this IP article archive. It addresses every-day issues that arise from handling IP matters. In our site, you can find a selection of articles that answer simple questions, as well as more complex litigation matters like interference proceeding.