Can someone oppose my already registered trademark?
date: 2021-08-05 Alexandra Chopenko Read by:

    The most exciting stage of the trademark registration process is receiving the registration certificate; however, in our experience, some clients are disappointed after being granted the certificate of the protection of their mark.


    A client has been established for 10 years and has had quite a successful development of their brand overseas. Keeping in mind the concept of first-to-file in some major markets, the client decided to register its marks first, before starting its operations in other jurisdictions. After filing many marks and receiving registration certificates in multiple countries, the client was eager to begin their new overseas ventures. However, on the Japanese registration certificate, the following sentence caused concern – “… This mark has been published in Japan on 01/16/2021; the publication period is two months. If no objection is raised during the publication period, the registration of the trademark in question will take effect. Otherwise the registration certificate will be invalid.”


    How can this be, my mark is registered but is still under a risk to be opposed and cancelled?


    When it comes to overseas trademark registration applications, terms such as "complexity" and "variability" are in regular use. The above problems are actually caused by the review process of different overseas countries/regions. As mentioned above, the Japanese trademark will be announced about one month after the registration is approved, and the announcement period is two months. Anyone who has an objection to the trademark registration can file an opposition application during the publication period. Therefore, after a trademark is approved for registration, there is still a risk of opposition. In fact, quite a few countries have a similar procedure to Japan – Germany, Norway, Denmark, and others.


    The client, upon encountering such a case, has a natural question – can the trademark be used normally after registration?


    The answer is yes.


    The trademark has passed the official review and approved for registration, indicating that the probability of the existence of the previous identical/similar trademark is relatively low, so the risk of subsequent opposition during the announcement period is also low. Although the status of the trademark is not secure yet, since the trademark has been approved for registration, it shows that the trademark registrant has the trademark rights, and therefore the trademark can be used normally. However, it should be noted that if subsequent trademarks are not registered due to opposition, the use of the trademark must be stopped in time to minimize the potential risk of infringement.


    Objectively speaking, although the "post-publication" procedure has brought certain uncertainty to some registered trademarks, this type of review process also has certain advantages:


    1. Post-publication procedure can effectively shorten the trademark review cycle, increase the review speed, and provide an entryway for trademark owners to enter the market;

     

    2. Announcement after the trademark registration is approved not only gives other owners of the same/similar trademarks the opportunity to raise objections, but also reduces the chance of malicious objections based on the official review results (approved registration).


    Trademark registration procedures vary greatly from country to country, and having this information is very important for trademark owners to begin operations in the market. Kangxin IP Platform provides clients with a complimentary trademark knowledge base, including trademark registration application procedures and review cycles, as well as laws & regulations of 55 jurisdictions, which are being continually added and updated. We created a one-stop knowledge base for clients to help simplify and understand the application standards of various jurisdictions so as to make reasonable arrangements prior to filing.

    

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