Author: Evgenia Gainutdinova, Associated Partner, Latvian Patent, Trademark and Design Attorney, European Trademark and Design Attorney, Lawyer at METIDA
Continuing to introduce new regulation entered into force in Latvia with new Law on Industrial Property Institutions and Procedures to our readers, this blog article is about the changes which concerned the work of the Board of appeal.
A new title of the Board of appeal within the new law is Industrial property Board of appeal (IPBoA).
Provisions of new law and subsequent legal acts lays down the field of competence of the Industrial property Board of appeal (IPBoA), regulates procedures and fees for said procedures.
Within the framework of the competence of the IPBoA are the following types of cases:
- Appeals against decision of the Patent office in patent, trademark, design and topographies of semiconductor products cases;
- Oppositions against registration of trademark, design and topographies of semiconductor products;
Consequently the IPBoA will not handle oppositions against granting the patent any more, said cases are moved to the Civil court responsibility.
Terms for filing the appeal and opposition were not changed and remained the same, namely 3 months. Although owner of the international trademark registration is entitled to file an appeal (motivated reply to opposition) within 3 months from the day when the International bureau informed about the refusal (not the day when the refusal received).
One more changed term is the term for filing the motivated reply to opposition. In compliance with new provisions said reply should be filed within two months from the day of sending the opposition text to the owner of the contested trademark registration.
When the last day of the term falls to the holiday, then the term is forwarded to the next first working day.Cases are heard collegially consisting of three members. Procedural decisions are taken by the chairman.
Some changes were made concerning the procedure of requesting proof of use of the earlier trademarks. Previously legal provisions didn’t provide particular terms in which request for proof of use should be filed and rules framing the time period for which proofs of use should be collected and provided. Undefined terms resulted in situations when proof of use of the earlier mark was requested in any time of proceeding even during the hearing of the oppositions.
New law provisions now improved the situation making it clear for all parts involved. Respectively when the opposition is fully or partially grounded by earlier trademark, after which registration passed no less than 5 years previously, the owner of the contested trademark has a right to request obvious and sufficient (prima facie) evidence that this earlier trade mark has been actually used within the term provided for filing the opposition. As we can see this is same 3 months term.
The Board of Appeals shall disregard such grounds for opposition if the applicable evidence is not provided as requested, or if there is no such evidence pertaining to the last five years prior to the filing the opposition.
Similarly to the court the IPBoA tries to reconcile the parties and there are some instruments provided by new law which are included to motivate the corresponding party to settle the dispute amicably, namely:
The applicant of the opposition can get the 50% reimbursement of the opposition filing fee in case the settlement or the opposition is fully withdrawn before the term of 2 months provided for filing the motivated reply for the owner of the contested mark is expired. In case both parties involved are ready to conclude the settlement, IPBoA postpone the proceedings for the time period parties need to settle, but no longer than 6 months period without additional fee for postponement. Although if only one of parties offer to settle the dispute, IPBoA ask the opinion of the other party and then decide on postponement of the proceedings (no longer than 6 months) but postponement fee should be paid.
; the term of postponement could be prolonged, but no more than up to 2 years and by payment of the fee.Settlement agreement should be in written form and filed to IPBoA.
New thing for IP practitioners in Latvia is written process of proceedings in IPBoA. Although IPBoA can initiate the oral proceeding if consider it necessary as well as oral proceeding can be requested by the party. If the party requests the oral proceeding the additional fee should be paid. IPBoA decision could be appealed within 3 months from the day of announcement of the decision in Riga Vidzemes district court by corresponding statement of claims. In fact this is big positive change of the previous practice in Latvia, because previously decisions of Board of appeals were possible to appeal on formal grounds in Administrative court. Now IPBoA decisions will be reviewed by Civil court on substantial grounds. The second advantage of the new order of reviewing IPBoA decisions is more competent judges in IP law and IP disputes what hopefully will influence enforcement of IP rights in Latvia positively.
As regards fees, the amounts were changed a little, namely currently the fee for filing the appeal is 150 EUR and fee for filing the opposition is 180 EUR. Additional fee for oral proceeding is 80 EUR.
It should be noted that Latvian Patent Office provides a 10% discounts for applicants who use e-filing system of Latvian Patent office for filings. Not all LPO procedures are available in e-filing system, but oppositions are possible to be filed electronically.