S.L. 597.4 Art. 40Opposition proceedings.  

(1) Where the opposition is found admissible pursuant to rule 39, the Office shall notify the applicant that within a period of ninety (90) days from the date of notification sent by the Office, he may:

(a) withdraw his application; or

(b) restrict the goods or services by deleting from his application some or all of the goods or services against which the opposition is directed; or

(c) submit a counterstatement against the opposition as well as any supporting evidence, and a reasoned statement on the grounds, the facts and arguments with respect thereto:

Provided that where the applicant is withdrawing or restricting the application by deleting some or all of the goods or services against which the opposition is directed, he shall notify the Office of this withdrawal or restriction on the relevant form which is to be accompanied by the prescribed fee.

(2) Where, within the period referred to in sub-rule (1), the application is withdrawn, the opposition proceedings shall be closed.

(3) Where, within the period referred to in sub-rule (1), the applicant informs the Office that the application is being restricted by deleting some or all of the goods or services against which the opposition is directed, the applicant is to specify:

(a) which of those goods or services are being deleted;

(b) when not all said goods or services are being deleted, which of these goods or services are being kept in the application;

(c) which of the goods or services contained in the original application and against which the opposition was not directed will be kept.

(4) If within the period stipulated in sub-rule (1), the Office receives representations in accordance with sub-rule (3), it shall notify the opposing party of said representations and invite it to state, within thirty (30) days from the date of the said notification sent by the Office whether it would like to proceed with the opposition. If this is the case, the opposing party shall specify against which of the remaining goods and services originally opposed, it is sustaining its opposition. Such a statement is to be accompanied by the prescribed fee:

Provided that the opposition may only be sustained in respect of goods or services which were originally opposed, and which have not been deleted by the applicant:

Provided further that the opposition proceedings shall be considered closed where the opposing party:

(a) withdraws the opposition in light of the restriction;

(b) does not, within thirty (30) days from the date of the notification sent by the Office referred to in this sub-rule, submit a statement indicating that it will sustain the opposition on goods or services which have not been deleted by the applicant notwithstanding that they were originally opposed;

(c) indicates that it is continuing with its opposition on the basis of goods or services which were not originally opposed.

(5) (a) When the opposing party informs the Office that the opposition is being sustained as stipulated in sub-rule (4), the Office shall notify the applicant accordingly.

(b) Within a period of thirty (30) days from the date of notification sent by the Office, the applicant may:

(i) withdraw the application as prescribed in rule 9; or

(ii) submit a counterstatement against the opposition and any supporting evidence, and a reasoned statement on the grounds, the facts and arguments with respect thereto.

(6) (a) Where a counterstatement is submitted, the Office shall notify and send a copy of the counterstatement to the opposing party.

(b) Within ninety (90) days from the date of notification of the applicant’s counterstatement sent by the Office, the opposing party shall inform the Office in writing, whether it is withdrawing or maintaining its opposition.

(c) In the case where the opposing party informs the Office that the opposition is being maintained, it shall, at the same time, pay the prescribed fee and submit any additional supporting evidence, and a reasoned statement on the grounds, the facts and arguments on which the opposition is being maintained:

Provided that pursuant to sub-rule 5(b)(ii) and where the applicant did not delete from his application goods or services which were opposed to in the initial opposition, the opposing party shall also specify that it is maintaining its opposition against said goods or services.

(d) In the case where the opposing party does not inform the Office, within the period stipulated in paragraph (b), whether it is withdrawing or maintaining the opposition, the Office shall consider the opposition as withdrawn and proceed with the registration of the trademark.

(7) (a) For the purposes of article 50(2) of the Act, such joint request shall not be made after the expiry of the ninety (90) day period referred to in sub-rule (1).

(b) When a friendly settlement is reached within the ninety (90) working day period provided for in article 50(2) of the Act, the applicant and the opposing party are to provide a joint statement indicating that such a solution has been reached within twenty (20) days from the expiry of the said period.

(c) The joint statement shall clearly and unequivocally indicate the nature of the friendly settlement stating the outcome of the application and the opposition:

Provided that any amendments to the goods or services are to be made as prescribed in rule 9.

(d) When a joint statement is not received within the twenty (20) day period referred to in paragraph (b) or when, during the period contained in article 50(2) of the Act, one of the parties notifies the Office that no agreement has been reached, it shall be deemed that the opposition is being maintained:

Provided that in such a case:

(i) the applicant may file a counterstatement within ninety (90) days from the end of the twenty (20) day period referred to in paragraph (b);

(ii) following the filing of the counterstatement the procedure shall be that established in sub-rule (6).

(8) The application shall be deemed to be abandoned, if within the time periods provided for in sub-rules (1) and (5), the Office is not informed that any of the actions stipulated in these sub-rules have been undertaken.

(9) Where, within the period referred to in sub-rule (1), the Office is informed that the application is rejected in parallel proceedings, the opposition proceedings shall be closed.