Documents often need to be submitted as part of opposition and cancellation proceedings and when objecting to a provisional refusal to register a trademark by BOIP. A new rule has been issued by the BOIP Director General setting additional requirements on how to do just that. The new provisions are explained below.
Which documents are concerned?
In opposition and cancellation proceedings, documents are usually filed to demonstrate that a trademark is in use (i.e. to prove that it should not be revoked on the grounds that it is not in use or not known). In the case of provisional refusals to register a proposed trademark, the documents concerned are usually submitted to prove that a trademark has acquired distinctive character through use. It is paramount that the person submitting the documents be free to submit whatever material he or she considers necessary to provide the required evidence.
Why have new rules been issued?
The way in which documents are presented affects the quality of the evidence submitted and how easy it is for BOIP and the opposing party to comprehend. It is not in the interests of any party involved when large numbers of documents are submitted and it is not clear how they should be interpreted. Doing so not only creates unnecessary work for the opposing party and BOIP, it also creates a real risk that the material will not be interpreted as the filing party intended.
What does the new rule cover?
The rule issued by the Director General on 1 December 2020 sets out new requirements for presentation and delivery of evidence. The explanatory note accompanying the new provisions is available here.
Questions or comments?
Do you have any questions or comments concerning the new rules? If so, we would be delighted to receive them by e-mail to legal@boip.int