If you don't reply, you lose your rights

Author:

Petter Rindforth
Fenix Legal KB
Stockholm

While this may seem to be a traditional and obvious rule for all holders of trade mark and domain name rights, the new Swedish Trademarks Act as well as the ADR Accelerated Proceeding make it even more important to be active if you want to keep your registered rights.

The Swedish Trademarks Act (SFS 2010: 1877) came into force on July 1 2011. In short, the Act is now modernised and simplified, adapting both EU and international regulations and making it possible for Sweden to join the Singapore Treaty on the Laws of Trademark on December 16 2011.

Some of the changes in the new Act are:

Reject in full or in part: With the new Act, a partial obstacle to your application will not automatically lead to a full rejection, only in respect of the specific goods/services – even as part of the same class.

Transfer of an application: If someone else submits an application for registration of a trade mark that you consider to be yours, you can request that the application be transferred to you. In that case, you are required to show that you have better rights to the mark applied for than the person who has applied for it.

Three-month opposition period: A change from two to three months, the same as for Community Trademark Registrations.

Surname objections: Although a surname may still be cited against your application, the new Act has limited this objection to cover cases when a trade mark applied for contains or consists of something which is meant to be perceived as someone else's distinctive surname, if the use of the mark would disadvantage the bearer of the name and the name clearly does not refer to someone long-since deceased. In practice, a number of trade mark applications (Swedish national or IR trademarks covering Sweden) filed before July 1 2011 and by then getting an Official Action stating the mark was confusingly similar to a surname in Sweden, have now been accepted for registration without the need for any further arguments, as the Examiners have reconsidered the surname objection based on the new Act.

So, back to the "If you don't reply …" issue. Perhaps the most wanted (from applicants dealing with obstacles of prior marks and firms) change is the introduction of an Administrative revocation procedure of a trade mark registration.

Previously, a revocation pro-cedure required court pro-ceedings. The new procedure enables you to a file a revocation application direct-ly with the Swedish Patent and Trademark Office (PTO), making it easier, faster and more cost efficient to revoke, among other things, trade marks which are no longer used.

According to the Act, a trade mark registration can be revoked if it has not been genuinely used in Sweden for a period of five years after the registration procedure was concluded. As stated by the Swedish Supreme Court (Case T4256-04 of February 1 2006), the registration procedure is not concluded until after the opposition proceedings or the time limit for filing an opposition has come to an end.

Once the application for revocation has been filed and formally accepted, the PTO must serve the owner of the registered trade mark with a notice to express an opinion within a specified time, informing the owner that the case can be decided even if he or she does not respond.

If the owner agrees to the registration being revoked, the PTO must revoke the registration. The same applies if the owner does not contest the application in time. If the owner only contests the application with regards to certain goods or services, the PTO must revoke the registration for the other goods or services. If the owner, in time, contests the application in full or in part, the applicant has the opportunity to request that the case be referred to the district court.

It is interesting to note that the PTO is still working on a practice to communicate with the owner of the disputed trade mark, in the case the official (at PTO) address records do not work. Is the PTO responsible to check further, or is it the applicant, or is it the responsibility of each trade mark holder? Also, if the holder has a registered attorney, it is important that the POA clearly states that the PTO can communicate also on this with the attorney, rather than to file directly with the registered trade mark owner somewhere else in the world with a registered postal address that may not have been updated in the Swedish PTO records for the last eight years or so.

If you don't reply, you lose your rights – but you must be sure that the PTO can communicate with you.

It is the same possibility/risk (depending which side of the dispute you represent) with Swedish .se domain names. When filing a petition for alternative dispute resolution proceedings under .se, it is now possible to choose an accelerated proceeding. This will only be applicable if the domain holder fails to respond to the ADR petition and it offers an opportunity for the petitioner to access faster processing of the case, as the panellist has 10 working days to decide on the case instead of the normal 30 days. Since the first case of May 12 2011, 13 accelerated proceedings have been decided, with 12 transfers to the complainant, and only one denial. Although the panellist needs to consider the facts and comments provided by the complainant, if the domain name holder does not reply, there is of course a bigger risk/possibility of a fast transfer decision.

To summarise: It has become much easier to protect your trademarks in Sweden, but once you have your registrations make sure to use them, to update contact details and to reply on time.