Deadline for Opposition Passes, but Trademark Opposition Accepted as a Cancellation

It is well established that opposers have three months to file trademark oppositions. Once this deadline has passed, the correct procedure is to file a cancellation request. There are not many differences between the two proceedings, but the onus changes to an assumption of validity.

Marco Pietroni filed a Madrid Protocol trademark application that specified Israel as one of the countries covered. The mark, 251203 is for the word “Stoneglass” and was filed in classes 19 and 21 for Glass element for building, glass slabs for use in building, plate glass for building, sheet glass for use in building, glass panels, glass tiles (not for roofing), glass for building, and in class 21 for sheet glass (except glass used in building), sheet glazing materials (other than for use in building), glass panels (semi-finished article).

The mark was allowed on 7 November 2014, and a notice was sent to the WIPO that unless an opposition was filed by 28 February 2014, the mark would issue.

An opposition was filed on 2 March 2014 under Section 56 of the trademark ordinance, and a copy, in Hebrew was sent to the International Registry that day.

Since no response was received, the mark was considered cancelled.

I examined the register.

The record is as follows:

Changes
יומן שינויים
תאריך הפרסום
תאור (לועזית)
תאור (עברית)
מהות הארוע (לועזית)
מהות הארוע (עברית)
תאריך הארוע
Publication date
Description (English)
Description (Hebrew)
Nature of event (English)
Nature of event (Hebrew)
Date of event
28/11/2013
Accepted
קובל
07/11/2013
Commencement of opposition procedure
פתיחת הליך מסוג התנגדות
02/03/2014
Cancellation of opposition procedure
סגירת הליך מסוג התנגדות
24/06/2014
Cancellation – abandoned
נמחק – הוזנח
24/06/2014

Under regulation 37 of the trademark regulations, since more than two months had passed and the trademark owner had not responded to the opposition, the mark was considered abandoned.

In other words,  an opposition procedure was initiated despite three months having passed, and on applicant failing to respond, the cancellation procedure was canceled and the mark was registered as abandoned.

COMMENT

In my opinion, this is a miscarriage of justice. For whatever reason, the opposition was filed too late. It should have been ignored. Since it was too late, there is no reason why the applicant (who does not have local representation) should have responded.

Regulation 37 follows regulation 35. The requirement to respond to an opposition presupposes that the opposition was timely filed.

In the Suprene case, the Deputy Commissioner Ms Jacqueline Bracha ruled that she does not have authority to extend the three month drop deadline for filing oppositions and that if the deadline is missed, a cancellation proceeding is in order.

One wonders why the Adjudicator Ms Shoshani Caspi considers that she does have this authority?

We cannot even tell if the International register informed the applicant of the late filed opposition. Generally late submitted documents are not considered.

One Response to Deadline for Opposition Passes, but Trademark Opposition Accepted as a Cancellation

  1. יעל says:

    According to my calendar, Feb 28 was a Friday, which means a non-working day in Israel. Thus the opposition was duly filed on the next working day, Sunday, March 2, 2014. The Israeli Patent Office acted in accord with the Law.

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