Time limits for lodging oppositions clarified by registrar

In British American Tobacco v Lakson Tobacco Company Limited (Case 136 of 2005, January 9 2007), the registrar of trademarks has issued clarification as to the total time period available to an opponent for lodging a notice of opposition against an application for registration published after the promulgation of the Trademarks Ordinance 2001 (new law) and notification of the Trademarks Rules 2004 (new rules).

The opponent in the case at hand, British American Tobacco (BAT), opposed the registration of the label trademark TRI STAR FILTER filed by Lakson Tobacco Company Limited for goods in Class 34 of the Nice Classification. BAT contended that as the application was filed under the Trademarks Act 1940 (old law) and Revised Trademark Rules 1963 (old rules) the aggregate time period available to BAT for lodging notice of opposition was eight months (ie, two months as provided under the old law, with six extensions of one month each as provided by the old rules).

BAT had lodged the notice of opposition within eight months by applying for a number of extensions under the old rules.

BAT also contended that the old law and old rules would apply to trademark applications filed under the old law that were subsequently advertised after the promulgation of the new law.

The registrar of trademarks disagreed with BAT and held that in oppositions to applications which have been filed under the old law yet advertised after the promulgation of the new law, the new rules will be applicable. The aggregate time period provided to opponents for lodging a notice of opposition is four months under the new rules (ie, two months with two extensions of one month each).

The registrar of trademarks consequently treated the opposition filed by BAT as time barred and allowed the contested application to proceed to registration.

Salman Ahmed Sheikh, Sheikh Brothers, Karachi