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January 24, 2018
Cooling-off period for trademarks
Cooling-off period is a period that both parties can negotiate for a settlement in the opposition stage. In practice, the purpose is to restrict the other party’s designated goods / services covered by the application during the negotiation. However, Taiwan does not have such provisions, but can file a request to postpone the examination of an opposition application based on the ongoing settlement. Herewith we summarized the relevant rules of cooling-off period in EU, UK, and Australia, and similar procedures in Taiwan.
When receiving the Notice of Opposition, both parties will automatically have 2 months cooling-off period. If an extension of time is required, both parties can file a one-time extension of cooling-off period, which the deadline will be extended for 22 months. The cooling-off period shall not exceed 24 months. During this period, both parties can negotiate and seek for a settlement in order to avoid further extra costs in the future. Meanwhile, it helps to ensure the trademark right for both parties. When reaching an agreement, the opposition applicant may withdraw the opposition. Furthermore, if the conditions for reaching the agreement is based on restrict one’s party’s designated goods / services or withdrawal of EU trademark application, the EUIPO shall refund the opposition fee to the opposition applicant.
The rules of cooling-off period are similar to EUIPO. It can only be raised in the opposition procedure. The purpose of cooling-off period is to negotiate and reach a settlement between both parties, and to avoid the additional costs and long period of legal process in the future. One of the parties shall raise the request within 2 months after receiving the Notice of Opposition. Either party can raise the request, but both parties must agree on it. The cooling-off period is 9 months. Both parties can negotiate before entering the stage of litigation. If extension of time is required, a one-time extension may be filed for a period of 9 months by one of the parties, but both have to agree on it. The cooling-off period shall not exceed 18 months. If no settlement is reached between two parties, the opponent shall submit an notice of defence within one month after the cooling-off period expired.
The cooling-off period of IP Australia is slightly different comparing to EUIPO and UKIPO. Either party has to file a request of cooling-off period to IP Australia in opposition stage. For instance, the period can be requested at any time after a statement of grounds has been filed but before the Registrar has made a decision on the opposition or dismissed the opposition. The length of cooling-off period is 6 months. If both parties agree, an one-time extension can be requested, which the IP Australia will give another 6 months for both parties to negotiate. However, if both parties wish to end the period earlier, either party may file a request to discontinue it. Lastly, if no settlement can be reached for both parties, the opposition procedure will continue to proceed. If the cooling-off period began during the evidence in support stage, the opponent has to file evidence in support within 3 months after the cooling-off period ended.
Note: A cooling-off period is not applicable to opposition proceedings where a notice of opposition was filed before 15 April 2013.
In accordance with trademark practice in Taiwan, if both parties are willing to seek for a settlement after responses or statement of grounds has been filed, a request of “postpone examination” may be filed to TIPO. The applicant must indicate the required time length to postpone the opposition.
As long as the request is granted, the opposition examination shall be postponed. During this period, both parties may begin to negotiate. The examiner will consider giving a period of 3 to 6 months for postponing the examination depending on the case (For example, whether the two parties are domestic or foreign applicant or if the case involves the parties' global considerations, etc.). If both parties do not reach a settlement after the expiration, the examiner shall continue the examination procedure with document and information on hand.
If the period is expired, and applicant or opponent wishes to require for “postpone examination” again, the examiner will decide whether to grant an extension depending on the case. However, if both parties are unable to reach for a settlement, the examiner will make a final opposition decision within 2 months after the procedure of filing response or statement of grounds ended.