Understanding the singular regulations of opposition proceedings in Cape Verde

As the first national trademarks granted in Cape Verde celebrate 10 years of being in force, the country is in the early stages of strengthening its national system of IP protection.

While Cape Verde does not yet belong to any major IP treaty enabling the registration of IP rights, trademarks filed directly with Cape Verde’s IP Office (IGQPI) have provided local and foreign applicants with legal protection.

With increasing numbers of registrations, it is expected that conflicts between new applicants and prior registrants will gradually become more frequent. It is therefore useful to understand the proceedings necessary to file an opposition in Cape Verde.

General information on oppositions

Trademarks in Cape Verde are advertised in the Intellectual Property Bulletin, which is usually published three times a year.

The deadline to file oppositions is two months from said publication. If an opposition is filed, the counterstatement can be filed up to two months after notification. Both deadlines can be extended by one month if a request is filed before IGQPI. A further extension can be granted when there are ‘justifiable reasons’.

While the decision is pending, both parties can submit additional statements that help to clarify the case.

If both parties agree, the review of the opposition can be suspended by up to four months. The review can also be suspended if there are preliminary rulings that need to be addressed first.

The opposition statement or further statements should be filed in duplicate.

It is possible to file documentation that supports the claims made with the statements. This documentation can be filed late but will be rejected if it proves unnecessary or merely repeats claims that have already been made.

Oppositions or counterstatements filed after the deadline is passed can still be considered if a special authorisation is granted. The criteria for this authorisation are not specified and therefore it should not be relied upon.

Grounds for opposition

There are several grounds on which opposition can be based, which can be raised during proceedings:

• lack of distinctiveness;
• the application was filed by an unauthorised representative;
• unauthorised use of names, portraits, copyrighted works, other IP rights or company names;
• likelihood of confusion with prior marks filed for related goods/services;
• infringement of well-known or renowned marks; and
• unfair competition.

Well-known and renowned trademarks

Cape Verde’s IP Law establishes a first-to-file system and applicants should be aware that very few provisions provide prior rights based on local use in commerce. Additionally, the IP Law provides that trademarks should be refused if they overlap with similar marks for related goods or services.

To overcome these limitations, trademark owners may file oppositions based on well-known or renowned trademarks. Prior to filing an opposition based on these grounds, the person making said claims should file their trademark locally in connection with the goods or services that are well known or renowned.

Using these provisions allows trademark owners to deal with bad-faith applications. Considering that Cape Verde does not belong to regional or international treaties allowing for local trademark protection, companies sometimes fail to realise that a local trademark is necessary and are forced to claim well-known or renowned status, which usually makes the opposition proceedings more complex and expensive.

Unfair competition

Unfair competition is a broad clause that can be claimed during opposition proceedings and generally relates to actions in trade or commerce that are deceptive or wrongful (eg, causing confusion with one’s business, making false claims made to discredit others or confusing consumers with regard to the characteristics of certain products).

Unfair competition is usually used as a secondary argument to other, more objective complaints, such as the likelihood of confusion with prior marks. with the latter being more easily taken into consideration by the IP Office. However, unfair competition claims are especially useful if there is a broader background of malpractice between the parties, especially if the case is appealed before a court of law.

Appeals

It is possible to request a hierarchical appeal of a decision on opposition matters if new facts arise that could affect the decision and if the said decision was not yet published.

However, in most instances, after a decision is issued on opposition matters, appeals should be filed before a court of law within two months of its advertisement in the Intellectual Property Bulletin.

This is a co-published article, which was originally published in the World Trademark Review (WTR).