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Action for failure to act against the Trademark Office

By María Nebreda, Hoet Peláez Castillo & Duque - 28/08/2018
Action for failure to act against the Trademark Office

On May 16, 2017, an action for failure to act against the Trademark Office was filed before the Second Administrative Court. The action was filed on the grounds of an official notice published in the Trademark Bulletin regarding opposition proceedings that had not been solved by the Trademark Office within a reasonable time frame.

The heading of the notice read as follows:

“IT IS MADE KNOWN TO ALL USERS, AGENTS AND GENERAL PUBLIC, AND ESPECIALLY TO ALL INTERESTED PARTIES IN OPPOSITION PROCEEDINGS FILED AGAINST APPLICATIONS PROCESSED BY THIS OFFICE…THAT IN ORDER TO ORGANIZE AND SOLVE ALL PENDING ADMINISTRATIVE PROCEEDINGS, YOUR INTEREST TO CONTINUE THE PROSECUTION OF SUCH PROCEEDINGS MUST BE RATIFIED IN WRITING. A PERIOD OF TWO (2) MONTHS FROM THE DATE OF THIS NOTICE WILL BE GRANTED TO RATIFY. IF NO RATIFICATION IS SUBMITTED, IT WILL BE UNDERSTOOD THAT THERE IS NO LONGER AN INTEREST IN CONTINUING WITH THE PROCEEDING AND THE FILES WILL BE DECLARED OFFICIALLY ABANDONED. ALL RATIFIED FILES WILL CONTINUE THEIR LEGAL ADMINISTRATIVE PROCEEDING”.

Upon expiration of the two-month period, the Registrar should have rendered its decision regarding all ratified opposition files within the following 30 days, in accordance with the official notice.

As no decisions were rendered, the Trademark Office incurred in omission which enabled all interested parties to act before the Courts and request the protection of their rights.

In this sense, and after having heard the parties, the Court established: "as required by article 51 of the Constitution, everyone has the right to obtain a "timely" and" adequate" response. Now, as to the response being "timely", it refers to a condition of time, that is to say, that a response should be issued within an appropriate timeframe thus avoiding that the response becomes useless...."
Accordingly, the Court ordered the Trademark Office to comply with its obligation to render "timely" and" adequate" decisions in solving the opposition proceedings.

In addition, it categorically ordered the publication of the respective decisions in the Industrial Property Bulletin.

Source: Second Contentious Administrative Court

By María Nebreda, Hoet Peláez Castillo & Duque - 28/08/2018
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