Even after the examiner accepts a mark, registration is not final. Before registration the mark is published, and anyone who believes it harms them can file an opposition.
When to file?
Within three months of publication of the acceptance. Businesses whose brand matters therefore watch the publications to spot marks similar to theirs in time.
Common grounds
- The mark resembles the opponent’s earlier mark for similar goods, creating a risk of confusion.
- The opponent has goodwill in the mark, even if unregistered.
- The mark lacks distinctiveness or describes the goods. See what cannot be registered.
- The application was filed in bad faith, for example to block a competitor or “grab” another’s mark.
How the proceeding works
It takes place before the Registrar of Trademarks, similar to a legal proceeding: pleadings, evidence and affidavits, and sometimes a hearing. In many cases the parties settle, for example by narrowing the list of goods or signing a coexistence agreement.
If an opposition is filed against you
Do not ignore it. If no counter-statement is filed on time, the application may be deemed abandoned. Assess the prospects and the option of an early settlement. See also office actions.
After registration
Even after registration, cancellation can be sought on certain grounds. See trademark renewal and cancellation.
Where do you go from here?
A good trademark is chosen, checked and registered correctly from the start. At Paz Israel & Co. Law Office we support businesses, startups and entrepreneurs with availability searches, class selection, filing, responding to the examiner and oppositions, as well as registration abroad and enforcement against infringers. For more information see our trademark registration page, or contact us to schedule a meeting in Tel Aviv, Jerusalem or Modi’in.
This article provides general information, is correct as of the time of writing, and does not constitute legal advice or a substitute for reviewing your specific circumstances.