Simply put, a trademark opposition proceeding is thus a quasi-judicial proceeding usually heard before the Registrar of the Trademark Registry wherein an already registered trademark owner or an interested party seeks to prevent another party from registering a trademark.
Prior to the registration of a trademark, it is usually published in a trademark journal for a period of 3 months. During such publication period, any interested party or persons may oppose the registration of such trademark.
A trademark is a distinctive name, sign or logo which uniquely identifies the source of goods and services. It’s primary purpose is to ensure that no-one uses the trademark of another which is similar or identical, so as to prevent confusion in the course of trade in relation to the goods and / or services in which it is registered. It is a special mark which distinguishes the goods and services of one entity from another. An example of a trademark is the “just do it for nike logo, the pepsi sign logo, the apple sign logo for apple products. The list goes on.
How to answer to a trademark opposition proceeding
- Any person who intends to oppose the registration of a trademark is expected by law to give a notice to the Registrar of Trademarks of the said opposition to the registration within two months from the date of the publication.
- The said notice of opposition shall be in the prescribed form or manner and shall include a statement giving clear grounds of the reason for the opposition.
- For the purpose of opposition proceedings, the person or business filing the Notice of Opposition is referred to as the Opposer while the other party seeking to register the infringing mark is generally referred to as the Applicant.
- Upon filing the notice of opposition, the Registrar is expected to send a copy of every of such notice to the applicant.
- To answer to a trademark opposition, the applicant shall file a counter-statement in the prescribed manner and also state the grounds which he relies upon, within a period of one month of receipt of the notice of opposition. If the applicant fails to do so, it shall be taken that the applicant has abandoned his trademark application.
- Where the applicant reacts by filing a counter-statement, the Registrar shall ensure the service of such process on the persons who filed the notice of opposition.
- A date is fixed for hearing of the opposition application and after hearing both parties and considering the evidence before him, the Registrar shall decide whether, and subject to what conditions or limitations, if any, the registration is to be permitted or not.
- It should be noted that the Registrar may request the person(s) giving notice of opposition or an applicant filing a counter-statement to give security for costs of the proceedings, failing which such opposition or application may be treated as abandoned.
- The decision of the Registrar is not final and may be appealed to the Federal High Court.
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The Jubilee Chambers offers trademarks, patents, copyrights and industrial designs application as well as prosecution and opposition services. We are certified by the Intellectual Property Institute of Nigeria (IPIN)
