The registration process started without any problems, ONAPI had no objection and you successfully completed their examination. Everything was perfect until your trademark application was published and a third person opposed your application. Now you have to follow an administrative process to defend your trademark application and hope that ONAPI decides in your favor. I’m not going to lie to you, the administrative process may be complex and carries a significant time investment, but if you arrange a good strategy you may get your way.
First, inform yourself (or hire a person to do it for you) about the legal arguments used by the opponent. Mainly, make yourself the following questions:
- Does the opponent actually have a registered trademark?
- Is your trademark identical or confusingly similar to his/hers/theirs?
- Is the opponent’s trademark being used in the course of trade according to the legal requirements?
- Are the requested trademark and the registered trademark intended for the same products or services?
- Is the opponent’s trademark famous (or “notoriously known” as established in Law No. 20-00 concerning Industrial Property?
- Is your or the opponent’s trademark common, generic or descriptive?
- Are there identical or confusingly similar trademarks registered?
- Do you have other registrations of the same sign?
Once you have established the attack strategy, you must present a written defense against the opposition (that must be within the first 60 days counted from the notification of the opposition) in which you will reject or partially accept their arguments. After, the opponent has the same period of 60 days to present a rebuttal against your defense. Following this, you will have 60 days to present a surrebuttal, and then the case will be decided by ONAPI. The 60 days periods may be extended if requested on time.
If you or the opponent is not pleased with the decision, a motion of reconsideration may be filed. If you or the opponent is not satisfied with this last decision, you or the opponent may appeal before the Director of ONAPI. Finally, it could also become a judicial process in the Court of Appeals.
As you can see, you may end the process on the first or second stage or even in trial. However, you don’t lose much if you talk or try to talk to the opponent, maybe you could reach a trademark coexistence agreement. This option is highly recommended when you want to avoid losing time or going through the entire process or you have a high possibility of not succeeding.