Registered rights versus use in the market in opposition proceedings


FECHA: 10-05-2023


Andrea Miño



“The concept that trademark registration grants ownership of and exclusive rights to use a trademark to identify and protect the goods and services for which it was registered is accepted worldwide”.

“When the IP Office grants a trademark registration, it confers rights and obligations to the owner, including the ability to oppose a third party’s application for an identical or confusingly similar trademark. As part of the opposition proceedings, the defendant may submit evidence to refute the opponent’s allegations”, as explained by our associate Andrea Miño in an article published in WTR.

Miño recalls that “in recent years, it has become common practice for an applicant whose mark is being opposed to submit evidence demonstrating that the use of the opponent’s mark is limited to specific goods or services, in an attempt to minimise the risk of confusion between the conflicting marks”.

In some of these cases, she adds, “the IP Office considered these allegations to be valid and allowed the registration of trademarks similar to previously registered trademarks – thus erroneously applying the specialty principle, which directly affects registration rights, one of the fundamentals of trademark law. Such ex officio restriction of the goods was a clear overreach of the examiner’s powers, in violation of the trademark owner’s rights”.

Our associate analyzes a recent case examined by the Intellectual Property Office in an opposition proceeding in which an applicant downloaded content from the opponent’s website in order for the Intellectual Property Office to consider only the products offered on that website (pharmaceutical products for the treatment of hypertension and heart failure), despite the fact that the trademark on which the opposition was based was granted for pharmaceutical, among other products.

The applicant sought to obtain the registration of a confusingly similar trademark to protect other types of pharmaceuticals (medicines for respiratory diseases).

Resolution No OCDI-2023-291 sets an important precedent whereby, in opposition proceedings, the registration rights must prevail over the use of the mark in the market. The decision makes it clear that, in order to obtain the limitation of a registration, there are other legally established proceedings, which can also be used as a defence in the opposition proceedings.

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