What is a trademark cancellation proceeding ?
A trademark cancellation action is a lawsuit to invalidate a trademark registration. In OAPI, cancellations deal with only registered trademarks and not pending applications. If a cancellation has been filed against your registered trademark, here are some helpful tips in defending your registration.
In what court are trademark cancellations held ?
Trademark cancellations are held in national judicial High Court, in the OAPI States members residence of the respondent
Who has standing to cancel a registered trademark ?
The plaintiff in a cancellation action, known as the petitioner, must have a prior OAPI trademark registration and a reasonable basis for believing they are being damaged by the trademark registration. Standing is typically not an issue for a trademark owner who alleges likelihood of confusion and priority. For trademarks alleged to be merely descriptive, the petitioner may show standing in their interest to use a term to describe the petitioner’s goods or services.
Can a mark be canceled after the opposition period ?
After the registration, OAPI publishes all trademarks for opposition. During the next six (6) months after the said advertisement into OAPI Journal, a third party may oppose a trademark application. If no opposition is filed six (6) months after the publication, the registration can be cancelled only by the High Court.
Why a third party might try to cancel your trademark registration ?
Preparing a proper cancellation defense requires understanding of the reasons for filing a trademark cancellation. Here are some of the more common grounds for cancellation.
Abandonment / Non use.
A third party may seek to cancel a registration on the basis of non use and/or abandonment. In such cases, registration owners can build a helpful defense by keeping good records of continuous use of the mark from the registration date to the present. At the request of any interested party, the court may order the cancellation of any registered mark which, for an uninterrupted period of five years prior to the request, has not been used on the national territory of one of the OAPI member States.
Likelihood of confusion.
An owner of a similar registered trademark may seek to cancel your registration on the basis that your trademark is confusingly similar to theirs. A cancellation claim on the basis of likelihood of confusion and priority must be filed within five years of the registration date. At the request of the interested parties, the court shall declare the registration of a mark invalid if it conflicts with a prior right.
Generic / Merely descriptive.
A thrid party may also seek to cancel your registration on the grounds that the trademark mark is generic or merely decriptive. Such a cancellation action must also be filed within five years of the registration date.
Informational matter / Failure to function as trademark.
The purpose of a trademark is to identify the source of goods and services. If your mark is on the borderline of conveying informational matter, others may try to cancel your registration on the grounds that the mark fails to function as a trademark.
How to defend effectively a trademark cancellation ?
What can you do to form a strong defense to a trademark cancellation?
A wise strategy for defending a cancellation action should take into consideration legal costs, timeframe and legal positions.
What is the cost of a trademark cancellation?
The initial costs of responding to a Petition to Cancel are generally not excessively high. You’ll want to budget for:
- Filing the counterstatements;
- Conducting the hearings;
The cost for handling the above three tasks will be negociate on due time.
What is the timeframe of a trademark cancellation?
When a Petition to Cancel is properly filed, the average length of time from the commencement of a trademark cancellation to completion is approximately twelve (12) months.
What are efficacious legal positions in defending against trademark cancellations?
Formulating a smart legal strategy requires close cooperation and good communication between the trademark owner and the trademark attorney. One option to consider early on and throughout the proceeding is the option of a mutually favorable settlement.
Any counterclaims to consider against the petitioner?
Sometimes an effective defense is go on the offense, but only if you have valid claims to bring against the other side. In certain cases where the petitioner owns at least one registered mark related to your proceeding, it may be worthwhile to explore any potential weaknesses in the other side’s registration.
For any information or queries in this regard, please contact: firstname.lastname@example.org