Changes in São Tomé and Príncipe's trademark regime – including a detailed opposition process - came into force in 2017. Below are the key points of the system, including all the major deadlines.
A trademark may be refused in opposition proceedings on the following grounds:
- The reproduction or imitation of a corporate name, establishment insignia or other distinctive signs, or merely characteristics that do not belong to the applicant or that they are not authorised to use, or if they are likely to mislead or confuse the consumer.
- An infringement of copyright.
- Use of references to a specific rural or urban real estate property that does not belong to the applicant.
- If an agent or representative of an owner of a trademark registered in a foreign country but not registered in São Tomé and Príncipe requests the registration of that trademark in their own name, without authorisation from said owner.
In the case of the final point, the National Service of Industrial Property (SENAPI), may grant the trademark in favour of its legitimate owner.
The opposition period starts from the date of publication of the trademark application in the Intellectual Property Bulletin. The deadline for any third party to object is three months.
Deadlines for replying to opposition
The trademark applicant may respond to the opposition's pleadings within three months from the respective notification.
The legislation also allows that, up to the decision date, supervening pleadings can be presented that clarify the process. This procedure has no special requirements.
Both opposition and response deadlines can be extended once for another month.
Suspension of examination
The opposition process may be suspended under two circumstances:
- by agreement of the parties for a period not exceeding six months; and
- where one of the parties presents a cause that could affect the decision of the opposition process (eg, pending legal action that could affect the legitimacy of the opposition process).
Late filing of documents
The late filing of documents is allowed, if authorised by the SENAPI.
Rules relating to inspections refer to all industrial rights. In this sense, as part of an opposition process, the Patent and Trademark Office may visit a commercial establishment to carry out inspections.
Administrative appeals and amendments
A decision issued by the PTO may be challenged within three months. The appeal must contain information on the facts that contradict that specific decision. The appeal will then be decided by a hierarchical superior.
This is a co-published article, which was originally published in the World Trademark Review (WTR).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.