International Opposition Guide: Comparative Practice And Procedures

Author:Ms Dianne Daley
Profession:Foga Daley
 
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International Opposition Guide: Comparative Practice and Procedures is an exclusive service provided to INTA members that offers a searchable database of country profiles on the structure of trademark opposition practice and procedure including:

general provisions alternatives to opposition opponent issues filing requirements post-filing stages and procedures Each jurisdiction profile follows a standardized format, with topics organized by subject heading. This format makes it easy to search within a jurisdiction profile or to compare how different jurisdictions treat a particular subject.

  1. AVAILABILITY

  1. Pre- or Post-Grant

    Opposition is available. Opposition is conducted pre-grant. Opposition is available for either all or part of the goods/services covered by a trademark application or registration. B. International Registrations

    This jurisdiction is expected to become a member of the Madrid Agreement and/or the Madrid Protocol: Jamaica's government has conditioned accession to the passage of amendments to the Trade Marks Act and Rules. It is not possible to predict when this will be accomplished. Discussions on required amendments are in progress. C. Collective and Certification Marks

    Collective marks are registrable. Collective marks are treated like ordinary trademarks but are subject to some special provisions including the requirement to file regulations relating to the use of the mark prior to the mark's being considered for registration. See Trade Marks Act section 3 and the First Schedule. Opposition to an application for a collective mark is available (i.e., pre-grant). Certification marks are registrable. Certification marks are treated like ordinary trademarks but are subject to some special provisions including the requirement to file regulations relating to the use of the mark prior to the mark's being considered for registration. See Trade Marks Act section 3 and the Second Schedule. Opposition to an application for a certification mark is available (i.e., pre-grant). II. EFFECT ON REGISTRATION RIGHTS

    An opposition (even if unsuccessful or later withdrawn) will delay the grant of full registration rights to the applicant. III. GROUNDS

  2. Absolute, Relative and Other Grounds

    The following grounds are admissible for opposition: relative grounds (based on proprietary rights, e.g., conflicting prior application/registration or rights in unregistered marks); absolute grounds (based on grounds other than proprietary rights, e.g., not a proper trademark, descriptiveness or deceptiveness); bad faith issues (e.g., wrongful claim to ownership); conflicting copyright or design rights; rights under Art. 6 bis of the Paris Convention or the equivalent thereto (notorious or well-known mark); rights under Art. 6 septies of the Paris Convention or the equivalent thereto (registration in the name of the agent or other representative of the proprietor of the mark); rights in a locally registered company name (where the company name is used as a trademark); rights in a foreign registered company name (where the company name is used as a trademark); rights under Art. 8 of the Paris Convention or the equivalent thereto (trade names) (where the trade name is used as a trademark or service mark); rights under Art. 6 ter of the Paris Convention or the equivalent thereto (Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations); offenses against public policy or principles of morality. B. First to Use or First to File

    In an opposition involving conflicting trademark registrations or applications, a later filing date prevails over an earlier use date (i.e., this is a first-to-file jurisdiction). IV. FORUM

    The opposition authority is part of the Trade Marks Registry/Office. V. COSTS AND FEES

  3. To Initiate

    The government/official fees for filing an opposition based on a single prior registration are: the same as for an opposition based on multiple prior registrations, i.e., JMD 4,500 (approximately USD 45). An additional USD 45 is required for the filing of evidence in support of the opposition. The approximate range of attorney fees for filing an opposition based on a single prior registration is: USD 600 to USD 1,000. A listing of Government/official fees for oppositions can be found online at: http://www.jipo.gov.jm. The website listing of Government/official fees for oppositions is presented in the following languages: English. B. Monetary Bonds or Surety from Foreign Opponent

    Provisions requiring monetary bonds or other surety from a foreign opponent are as follows: This is in the Registrar's discretion as outlined in Trade Marks Rule 12(14). There is currently no practice note or form that outlines what the Registrar would deem sufficient for the purposes of security. However, the Registrar may be guided by the Civil Procedure Rules. VI. BURDEN OF PROOF

    The burden of proof is neutral; i.e., both parties must prove any grounds, facts, allegations and defenses on which they rely in the opposition. VII. SUBSTANTIVE EXAMINATION

    The trademark registration process includes an official, substantive examination. This system includes an official substantive examination of an application on: both absolute and relative grounds. The official, substantive examination of an application is conducted before publication for opposition. Examination on relative grounds includes an official search for conflicting prior applications and the examiner has the right of objection and...

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