Understanding the unique regulation of opposition procedures in Cape Verde – Intellectual property
Green cap: Understanding the unique regulation of opposition procedures in Cape Verde
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As the first national trademarks granted to Cape Verde celebrate their 10th anniversary, the country is in the early stages of strengthening its national intellectual property protection system.
While Cape Verde does not yet belong to any major intellectual property treaty allowing the registration of intellectual property rights, trademarks registered directly with the Cape Verde Intellectual Property Office (IGQPI) have provided applicants with local and foreign legal protection.
As the number of registrations increases, it is expected that conflicts between new applicants and previous registrants will gradually become more frequent. It is therefore useful to understand the procedure necessary to file an opposition in Cape Verde.
General information on objections
Brands in Cape Verde are advertised in the Intellectual Property Bulletin, which is typically published three times a year.
The time limit for filing an opposition is two months from the said publication. If an opposition is filed, the counter statement can be filed up to two months after notification. The two deadlines can be extended by one month if an application is filed with the IGQPI. An additional extension may be granted where there are “justifiable reasons”.
While the decision is pending, both parties can submit additional statements that help clarify the matter.
If both parties agree, the examination of the opposition can be suspended for up to four months. The review can also be suspended if there are preliminary decisions that need to be dealt with first.
The statement of opposition or the additional statements must be filed in duplicate.
It is possible to file documents in support of the claims made with the declarations. This documentation may be filed late but will be rejected if it proves unnecessary or if it only repeats allegations already made.
Oppositions or counter-declarations filed after the expiry of the time limit may still be taken into account if special authorization is granted. The criteria for this authorization are not specified and should therefore not be relied on.
Grounds for opposition
There are several grounds for opposition that can be raised during the procedure:
- lack of distinctiveness;
- the application was filed by an unauthorized representative;
- unauthorized use of names, portraits, copyrighted works, other intellectual property rights or company names;
- likelihood of confusion with earlier trademarks filed for related goods / services;
- counterfeiting of well-known or renowned brands; and
- unfair competition.
Well-known and renowned brands
Cape Verde’s intellectual property law establishes a first-to-file system and applicants should be aware that very few provisions provide for prior rights based on local use in commerce. In addition, intellectual property law provides that trademarks should be refused if they overlap with similar trademarks for related products or services.
To overcome these limitations, trademark owners can file oppositions based on well-known or well-known trademarks. Before filing an opposition on the basis of these grounds, the person making the said claims must file his trademark locally in relation to the goods or services which are well known or renowned.
Using these provisions allows trademark owners to process bad faith claims. Considering that Cape Verde does not belong to regional or international treaties allowing the protection of local brands, companies sometimes do not realize that a local brand is necessary and are forced to claim a well-known or renowned status, which generally makes the opposition procedure more complex and expensive.
Unfair competition is a broad clause that may be invoked during opposition proceedings and generally relates to deceptive or unlawful commercial or commercial acts (for example, confusing one’s business, making false claims to discredit others or confuse consumers with regard to the characteristics of certain products).
Unfair competition is generally used as a secondary argument to other more objective complaints, such as the likelihood of confusion with earlier marks. the latter being more easily taken into consideration by the Intellectual Property Office. However, unfair competition complaints are particularly useful if there is a broader context of malpractice between the parties, especially if the case is being appealed to a court.
It is possible to request a hierarchical appeal against an opposition decision if new facts arise that could affect the decision and if the said decision has not yet been published.
However, in most cases, after a decision has been made on opposition issues, appeals must be filed in court within two months of its publication in the Intellectual Property Bulletin.
This is a co-edition item, which was originally published in the World Trademark Review (WTR).
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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