Once a trademark application has successfully passed the examination of the EU Intellectual Property Office (EUIPO), it is published in the Trade Marks Bulletin. The application is then open for others to oppose its registration. This summary explains the procedures for opposing trade mark applications in the EU and for defending an opposition. The proceedings are largely the same for EU trademark filings as well as for international registrations designated to the EU.
EU trademark applications are open to opposition for a fixed three-month period following the date of publication of the application. This time limit cannot be extended.
International trademark registrations designated to the EU are open to opposition between the first month and the fourth month following the date of first republication. This time limit cannot be extended.
Grounds of opposition
The opposition is a procedure that takes place before the EUIPO when a third party requests the Office to reject an EU trademark application or an international registration designating the EU on the basis of the earlier rights it holds.
The most common grounds of opposition include:
- Double identity: The application is identical with the earlier trademark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trademark is protected;
- Likelihood of confusion: Because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected;
- Non-registered earlier rights: The proprietor of earlier non-registered rights can prevent registration of a later EU trade markapplication if the proprietor has the right to prohibit the use of the application.
- Reputation: The proprietors of an earlier reputed registered trade mark can prevent registration of a later similar or identical EU trade mark application that, without due cause, would infringe on the earlier reputed mark.
The notice of opposition and any supporting evidence will be forwarded to the applicant.
The EUIPO will set an initial two month period known as the “cooling off” period to try and negotiate settlement to resolve their dispute. This period of time can be extended by a further 22 months if both parties agree.
If the parties do not want to negotiate settlement of the opposition, then once the initial two month cooling off period has expired, the opponent will have two months to file any legal arguments and evidence they have in support of their opposition, for example, to substantiate a claim of unregistered rights, evidence of confusion, evidence of their reputation in a mark etc. This is called “Statement of Grounds”.
The applicant then has two months following the opponent’s Statement of Grounds to file its response arguments, facts and evidence in support of the application. The opponent will then be given two months to file observations in reply. The opponent’s further observations usually mark the end of evidence rounds, though the EUIPO has discretion to grant further rounds.
The opposition decision is usually issued around three to six months from the close of proceedings. The successful party will be awarded costs, but the actual cost of the dispute are not awarded.
In the event that an opposition is successful, the applicant has the right to convert its EU trademark application into national trademark applications in the EU member states, for example if the opposition was based on an earlier right valid in only one member state. The right of conversion is however only available where the opposition decision does not affect a particular member state.
The opposition decision is open to appeal to the Boards of Appeal of the EUIPO within two months from the date of notification of the contested decision. A more detailed ‘statement of grounds’ must also be filed within four months from the date of notification of the contested decision. A further appeal of a Boards of Appeal decision can be made to the General Court of the European Union, and then in some cases to the Court of Justice of the European Union.
Our fee is based on actual time spent, 230 € / h + VAT. The official costs of opposition in EUIPO are 320 €.
In average situations the proceedings before the EUIPO take around 7 to 10 months to get to an initial decision.
European Trademark Attorney
We provide assistance of authorized European Trademark Attorneys in all opposition matters. You can be sure that you get your matters handled with duty and care also if you are not domiciled in the European Union and therefore need a local registered attorney to represent you. We have clients from all continents and provide excellent legal advice in all trademark matters. Ask also about our trademark monitoring services.
Vedinor Law Offices’ trademark team assists effectively and cost-efficiently in conducting opposition proceedings before the EUIPO. Should you have any questions, please do not hesitate to get in touch with us at firstname.lastname@example.org or book a free initial consultation below.