- There previously used to be delays in the notifi cation of documents to applicants due to their failure to inform the offi ce ofaddress changes
- A provision was added to the IP Code in order to fi nd a solution to the issue of serving documents to rights holders
- All documents that could not be served due to an address change have now started to be served via publication through an Official Bulletin
In the past, there used to be delays in the notifi cation of documents to applicants due to address changes and the applicants’subsequent failure to inform the Patent and Trademark Offi ce of such changes. This would cause opposition proceedings toremain pending for long periods of time, since applicants could not be offi cially informed of oppositions; therefore, the legalperiod for fi ling a counterclaim and raising a non-use defence could not start. This situation was causing delays not only inopposition proceedings, but also in the registration of applications, since notifi cations regarding payments for registration couldnot be sent and, consequently, trademark holders had to keep following up their registrations and wait to fi le an invalidationaction.
With the implementation of the ETEBS system, it became possible to send notifi cations online through ETEBS. A notifi cation isdeemed to have been duly made when the applicant enters the ETEBS system or, in any case, within 10 days of the submissionof the notifi cation through the system. For applications fi led before the ETEBS system entered into the force, where thenotifi cations could not be served to the applicants’ recorded addresses via certifi ed mail for any reason, the notifi cations wereleft pending if the applicants were not registered with the ETEBS system.
A provision was added to the IP Code (No 6967) for the sole purpose of fi nding a solution to the issue of serving documents torights holders: Article 160/7 stipulates that notifi cations under this law made in the form of announcements shall be publishedin the relevant bulletin without being bound by the form requirements of Article 29 of Law 7201. Such notifi cations areconsidered served seven days after publication.
Although the IP Code entered into force in January 2017, the offi ce started implementing it only on 7 April 2022. Therefore, alldocuments that could not be served due to an address change have only started to be served via publication through an Official Bulletin. As mentioned above, such notifi cations are considered served seven days after their publication in the Official Bulletin.
With the implementation of service by publication, it is expected that there will no longer be delays in the service of offi ceactions and that the number of pending applications will gradually decrease. On the other hand, as service by publicationtriggers the start of the offi cial period, brand owners are advised to monitor the fi les that are kept open due to a lack of serviceof offi ce actions - in particular, a lack of service of decisions in opposition proceedings.
First published by WTR in Jun 29, 2022.
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