78 results in "Resolving IP Disputes"
- Within 2 months after the date of receipt of the Notice of Opposition, the Trade Mark Applicant must file his Counter-Statement. [R 31(1)]
After the Opponent files a SD, what must the Trade Mark Applicant do?The Trade Mark Applicant must file with the Registrar his evidence in support of his application by way of a Statutory Declaration (SD) within 2 months from the date of receipt of the Opponents SD. [R 33(1)]
After the Trade Mark Applicant files his Statutory Declaration (SD), what must the Opponent do?The Opponent can choose not to reply to the Applicant's SD, if he does not have anything new to say in response to the Applicant's evidence. The opposition will proceed to a Pre-Hearing Review. However, the Opponent may also choose to file his evidence in reply to the Applicant's SD. If so, this has to be done within the deadline specified by the Registrar. [R 34(1)] After this, the opposition will proceed to a Pre-Hearing Review.
At which stage of the proceedings will IPOS introduce the mediation option?Mediation is introduced following the filing of the Counter-Statement.
Can I appeal against the decision made by the Registrar?Yes, you can do so within 28 days from the date of the Grounds of Decision delivered by the Hearing Officer. [Order 87 Rule 4(3), Rules of Court] It must be filed at the High Court and served on the Registrar and the other party within 7 days. [Order 87 Rule 4(5), Rules of Court]
Can I ask for costs at a Hearing?Yes, an application for costs may be made at a Hearing.
Can I file further evidence after filing my Statutory Declaration (SD)?Only if the Registrar allows. [R35]
Can I withdraw my Trade Mark Application at the Counter-Statement stage?
Yes, you can. You may provide a written request or file Form CM9 to withdraw your Trade Mark Application. [R 21A] You can file the form at our e-services portal, IP2SG. You would also need to inform the Opponent of the withdrawal.
Can I withdraw my Trade Mark Application at this stage?Yes, you can. You may provide a written request or file Form CM9 to withdraw your Trade Mark Application. [R 21A] You would also need to inform the Opponent of the withdrawal.
Can the Opponent ask for costs from me if I withdraw my Trade Mark Application after the Notice of Opposition is filed?
Yes, he can ask the Registrar for such costs. However, the Registrar, in deciding whether to award costs in favour of the Opponent, will consider whether the opposition might have been avoided if the Opponent had given the Applicant reasonable notice before the notice of opposition was filed.
The Registrar is more likely to award the Opponent such costs if it had requested you to withdraw your Trade Mark Application (and you did not do so) before filing its notice of opposition. [R40] [Fourth schedule of the Trade Marks Rules]