Trademark Opposition: in-depth analysis, and effective action plan
Q. What does opposition mean?
A. To request Trademark Office not to allow one to register a mark on a lawful ground.
Q. Who may oppose?
A. Any third party which sees that the applicant's mark does not meet registration requirement.
Q. May a trademark agent oppose on its own behalf?
Q. When can one oppose?
A. After the mark is published for opposition (about 2-3 months from filing date) until the trademark office makes a decision of allowance or rejection (12 month and more from filing date).
Q. That means there is no fixed deadline?
A. Yes, It is correct. One may oppose as long as an application is still pending.
Q. What will be required for an agent to oppose on behalf of its client?
A. An original Power of Attorney preferably notarized, and other supporting documents if any.
Q. How to oppose?
A. By filing a notice of opposition with Trademark Office.
Q. How will Trademark Office review a notice of opposition?
A. Typically, Trademark Office will invite application to present its opinion before making a decision.
Q. What applicant can do if Trademark Office accepts the opposition?
A. Trademark Office accepting an opposition will issue and office action for application to respond within 2 months. If Trademark Office finds the response unsatisfactory, it will issue a notice of provisional refusal for applicant to appeal to Trademark Office's Director within 90 days.
Q. What opposing party can do if Trademark Office rejects the opposition?
A. He or she may initial a fresh cancelation action against the applicant's registered mark.
Q. Does opposing party have to pay an official opposing fee?
Q. Will the opposing party have to pay any other official fee if he or she lose the opposition case?
Q. Will the posing party have to pay the wining party?
Q. How can one be aware of a mark to oppose it?
A. Each month, Trademark Office will publish new trademark application in its official Gazette.
Q. How one can opposition a mark filed under Madrid System?
A. One must monitor WIPO's Gazette to oppose a mark.
Q. That mean a notice of opposition must filed directly with WIPO?
A. No, opposing parties must file notice of opposition with directly with Vietnam Trademark Office.
Q. If no party oppose, will Trademark Office issue registration certificate?
A. Not necessarily. Trademark Office may exe officio refuse registration of a mark on absolute or relative grounds.
Q. Then when one should oppose?
A. When on absolute or relative grounds for a specific mark is not clear for one to see.