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1.Filing a Notice of Opposition[Original Blog]

Filing a notice of opposition is the first step in the process of challenging a trademark application that you believe infringes on your rights or interests. If you are an existing trademark owner or a potential applicant, you may want to monitor the trademark register and oppose any applications that conflict with your mark or business. Alternatively, if you are a trademark applicant, you may face opposition from other parties who claim prior rights or grounds for refusal. In this section, we will discuss the following aspects of filing a notice of opposition:

1. What is a notice of opposition? A notice of opposition is a formal document that initiates a legal proceeding before the trademark office or tribunal. It contains the name and address of the opposer, the details of the opposed application, the grounds for opposition, and the evidence and arguments to support the opposition. A notice of opposition must be filed within a specified time period after the publication of the trademark application, usually between 30 to 90 days depending on the jurisdiction.

2. What are the grounds for opposition? The grounds for opposition vary depending on the trademark law and practice of each country, but they generally fall into two categories: absolute grounds and relative grounds. Absolute grounds are based on the inherent characteristics of the mark, such as its descriptiveness, genericness, or lack of distinctiveness. Relative grounds are based on the similarity or identity of the mark with prior marks or rights, such as likelihood of confusion, dilution, or bad faith. For example, an opposer may argue that the mark is descriptive of the goods or services, or that it is confusingly similar to their own registered mark or well-known mark.

3. What are the benefits and risks of filing a notice of opposition? Filing a notice of opposition can have several advantages and disadvantages for both the opposer and the applicant. For the opposer, the benefits include preventing the registration of a conflicting mark, protecting their own mark and reputation, and deterring future infringement. The risks include losing the opposition and having to pay costs or damages, damaging their relationship with the applicant, and exposing their own mark to counterclaims or cancellation. For the applicant, the benefits include defending their mark and securing their registration, proving their good faith and distinctiveness, and strengthening their position in the market. The risks include losing the application and having to reapply or rebrand, spending time and money on the opposition, and damaging their reputation or goodwill.

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