issued by the DG
" Submission of supporting documents and means of proof "
1 December 2020
Documents often need to be submitted as part of opposition and cancellation proceedings and when objecting to a provisional refusal to register a trademark by BOIP. A new rule has been issued by the BOIP Director-General setting additional requirements on how to do just that. The new provisions are explained below.
Which documents are concerned?
In opposition and cancellation proceedings, documents are usually filed to demonstrate that a trademark is in use (i.e. to prove that it should not be revoked on the grounds that it is not in use or not known). In the case of provisional refusals to register a proposed trademark, the documents concerned are usually submitted to prove that a trademark has acquired distinctive character through use. It is paramount that the person submitting the documents be free to submit whatever material he or she considers necessary to provide the required evidence.
Why have new rules been issued?
The way in which documents are presented affects the quality of the evidence submitted and how easy it is for BOIP and the opposing party to comprehend. It is not in the interests of any party involved when large numbers of documents are submitted and it is not clear how they should be interpreted. Doing so not only creates unnecessary work for the opposing party and BOIP, it also creates a real risk that the material will not be interpreted as the filing party intended.
Requirements for the material
The documents to be submitted must be included in a bundle. This ensures that there is no misunderstanding about the number of pieces. The submitter indicates the beginning and the end.
The bundle should start with a table of contents. This helps the opposite party and BOIP to gain a quick insight into the submitted material as well as allowing them to retrieve relevant documents quickly. The table of contents must provide for three elements.
Number the different pieces in the bundle and include this numbering in the table of contents so that they can be easily retrieved. The numbering is also intended to be able to inspect the documents in combination with what is argued in a (if any) basic document, such as the arguments of a party. If documents in support of a claim are invoked, reference must be made to (the number of) the document relating to that claim.
2. Description of the documents
Describe the nature of the piece in the table of contents. Think of indications such as "Invoices", "Examples of advertisements", "Market research", "Annual documents", "Websites", "Publicity in [media]", "Sector data", "Examples of use in the market", etc.
3. Description of the facts
Indicate as precisely as possible the facts presented in each piece in the table of contents. Continuing on the above examples:
- "Invoices for [products] with [brand] from period [month year] - [month year]; including turnover figures for [products] with [brand] from period [month year] - [month year]".
- "Examples of advertisements for [products] with [brand] in [newspaper, country]; [magazine, country] from period [month year] - [month year]".
- "Market research by [name of research institute] on knowledge of [trade mark] in [country], d.d. [dd-mm-yyyy]".
- Annual reports of [submitter] covering the period [year] - [year].
- Website of [petitioner] with examples of use [trade mark]; Website of [third party] with examples of use [trade mark]".
- "Article in [medium] d.d. [dd.mm.yyyy], Article in [medium] d.d. [dd.mm.yyyy], etc "
- "Branch data: Size of market in [country] for [product(s)] in period [date] - [date]; Turnover [brand] in [country] in period [date] - [date]",
- "Examples of use in the market to promote [brand] such as [concrete examples]".
Submitted documents often serve to support a/several claims. In such cases, too, it helps all parties involved to be precise. A precise claim or statement will be supported by specific documents that have been submitted and not necessarily by all the documents. It should therefore be made clear in the arguments, where documents are referred to, that this is exactly what is being done. So please indicate the number in the bundle of documents of the document relating to a specific claim or statement. Incidentally, the same applies in responses to these documents. The responding party is expected to criticise a document by referring to that specific document.
Make it easy for the reader and mark relevant parts of the documents if they are not obvious. For example, if an advertisement covers only a small part of a page, mark it. Mark the relevant page of an annual report, for example, with an index or page marker.
BOIP's experience shows that large quantities of documents do not provide better evidence and that a (self-imposed) limitation in size often leads to more comprehensible evidence. For example, there is no added value in submitting all 20 periodicals (or copies thereof) in which the same advertisement has been published. It is better to show a limited number of examples of the specific advertisement and add an overview of all periodicals (including the area in which they appear and their publication dates) in which this advertisement has been placed.
BOIP strongly recommends that a maximum of 110 pages is observed.