Every year, around 1 in 5 EU trademark applications is opposed at the EUIPO. If someone has filed a mark that conflicts with yours, opposition is often your only tool to stop it – because the EUIPO will not reject a confusingly similar mark on its own. It is up to rights holders to act, within a strict and non-extendable three-month window. This guide explains who can oppose, on what grounds, how the procedure works step by step, what it costs, and what the real-life outcomes of EU trademark oppositions look like – including some high-profile cases where even global giants were caught off guard.
1. What is a trademark opposition at the EUIPO?
A trademark opposition is a formal procedure before the European Union Intellectual Property Office (EUIPO) in which a third party requests that a published EU trademark (EUTM) application be refused, either in whole or in part. The opposition is filed by someone who holds earlier rights – typically an earlier registered trademark – and who believes the applied-for mark conflicts with those rights.
The legal basis for EU trademark oppositions is Article 8 of the EU Trademark Regulation (EUTMR). The grounds are well-defined, the deadlines are strict, and – importantly – there is no second chance if you miss the window.
Opposition is one of the most cost-effective ways to prevent a conflicting mark from gaining registration across all 27 EU member states. A single successful opposition stops the application for the entire EU territory.
2. Why the EUIPO will not protect you automatically
This is the point that surprises many brand owners who are new to EU trademark law. Unlike some national offices, the EUIPO does not conduct ex officio checks for conflicting earlier marks. When it examines a new application, it only looks at absolute grounds – things like whether the mark is descriptive, misleading, or contrary to public policy. It does not search its own register for similar existing marks.
The practical consequence is straightforward: if you do not watch and oppose, you may lose rights you already have. A competitor could file a mark confusingly similar to yours, it could sail through EUIPO examination, be published, and become registered – all without the EUIPO notifying you or taking any action. From that point, you would face a registered right that could be used against you.
This is why trademark monitoring – scanning the EUIPO Bulletin, the WIPO Gazette and national offices’ publicators for newly published applications – is not optional for any serious brand owner. And it is why the three-month opposition window matters so much.
3. Who can file an opposition?
An opposition at the EUIPO can be filed by the proprietor of an earlier right that is affected by the new application. Earlier rights that can form the basis of an opposition include:
- An earlier EU trademark (EUTM) registered with the EUIPO
- An earlier national trademark registered in any EU member state
- An earlier international registration with effect in the EU or in an EU member state
- A well-known mark within the meaning of Article 6bis of the Paris Convention
- An earlier non-registered mark or other sign used in trade, if it confers on the proprietor the right to prohibit the use of a subsequent trademark under the law of the relevant member state – for example, a company name or trade name used in commerce before the filing date of the contested application
- A registered designation of origin or geographical indication protected under EU law
An important rule: you can only oppose on the basis of your own rights. You cannot cite someone else’s trademark as the basis for an opposition, even if you believe the applicant is infringing it.
Applicants from outside the EU are required to appoint a qualified representative before the EUIPO. EU-based parties may file directly, though working with an experienced trademark attorney significantly improves the quality and strategic positioning of the opposition.
4. Grounds for opposition under EU trademark law
The grounds on which an opposition can be brought are set out in Article 8 EUTMR. The most commonly invoked are:
Double identity (Article 8(1)(a))
The applied-for mark is identical to the earlier mark, and the goods or services are identical. This is the strictest ground – both the sign and the scope must match exactly. If both conditions are met, protection is automatic without the need to assess likelihood of confusion.
Likelihood of confusion (Article 8(1)(b))
The most frequently used ground. The applied-for mark is identical or similar to the earlier mark, and the goods or services are identical or similar, such that there is a likelihood of confusion on the part of the relevant public. The likelihood of confusion includes the likelihood of association – meaning consumers might think the two marks come from the same or economically linked businesses, even if they do not directly mistake one for the other.
EUIPO assesses likelihood of confusion by weighing up multiple factors, including the visual, phonetic and conceptual similarity of the marks, the similarity of the goods or services, the distinctiveness of the earlier mark, and the level of attention of the relevant consumer. These factors are interdependent: a high degree of similarity between the goods can compensate for a lower degree of similarity between the signs, and vice versa.
Reputation of the earlier mark (Article 8(5))
Even where the goods or services are not similar, the proprietor of a mark with a reputation in the EU (or in a member state, for national marks) can oppose if the use of the applied-for mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. This is often called the “anti-dilution” ground and is relied upon by well-known brands to block marks that could piggyback on their reputation.
Agent or representative filing without consent (Article 8(3))
Where an agent or representative of the trademark owner files the mark in their own name without the owner’s consent, the owner can oppose. This ground targets a specific form of bad-faith filing and is less common but important in international distribution arrangements.
Earlier non-registered rights (Article 8(4))
Opposition can also be based on an earlier non-registered trade mark or other sign used in trade, where that sign confers rights under the national law of an EU member state. A well-established company name, for example, can form the basis of an opposition in Poland under Polish unfair competition law – even without a registered trademark.
5. The EUIPO opposition procedure: step by step
Step 1 – Publication of the trademark application
Once an EU trademark application passes the EUIPO’s formal and substantive examination, it is published in the EU Trade Marks Bulletin. This publication triggers the opposition window.
Step 2 – The three-month opposition window
From the date of publication, a third party has exactly three months to file a notice of opposition. This deadline is absolute – it cannot be extended under any circumstances, and a late opposition will be rejected as inadmissible regardless of the merits.
For international registrations designating the EU, the opposition window opens one month after the first republication in the Bulletin and closes three months later.
Step 3 – Filing the notice of opposition and paying the fee
The notice of opposition must be filed with EUIPO – typically online via the EUIPO portal – and the official fee of €320 must be paid within the same three-month period. If the fee is not paid in time, the opposition is deemed not to have been filed.
At this stage, the opposition notice must specify the grounds and the earlier rights on which it is based. Crucially, the grounds stated in the notice of opposition cannot be extended after the opposition period has expired. This is a common procedural trap: if you only tick one ground in the form and later try to argue a different one, EUIPO will consider it inadmissible – as the Hacker-Pschorr case below illustrates.
Step 4 – Formal admissibility check by the EUIPO
EUIPO checks whether the opposition is formally admissible – whether it was filed in time, the fee was paid, the grounds are indicated, and the earlier right is identified. If there are deficiencies, EUIPO may invite the opponent to correct them within a set deadline.
Step 5 – Notification to the applicant and start of the cooling-off period
Once the opposition is admitted, EUIPO notifies the applicant. At this point, the cooling-off period begins automatically. See section 6 below.
Step 6 – Statement of grounds
After the cooling-off period ends (or is opted out of), the opponent has two months to file a substantive statement of grounds – the full legal and factual arguments, evidence, and reasoning in support of the opposition.
Step 7 – Applicant’s response
The applicant then has two months to file a response, which may include counter-arguments, evidence of coexistence, or a request for proof of use of the earlier mark (if relevant).
Step 8 – Further exchanges
The opponent may file observations in reply within two months. Each two-month period can generally be extended once by a further two months. EUIPO may grant additional rounds at its discretion, but this is the exception rather than the rule.
Step 9 – EUIPO decision
After the exchange of submissions is closed, the EUIPO issues a decision. Depending on the outcome, the opposition may be upheld (in full or in part), or rejected. The decision is published online. Either party can appeal to the EUIPO Board of Appeal within two months of notification of the decision.
In the opposition decision, EUIPO also decides on costs. The losing party typically bears the official opposition fee and a fixed contribution toward the other party’s legal representative’s costs – though the recoverable amount is capped by the EUIPO’s scale and rarely covers actual legal fees in full.
6. The cooling-off period and settlement options
One of the distinctive features of the EUIPO opposition procedure is the cooling-off period – a structured negotiation phase automatically triggered once the EUIPO notifies the applicant of the opposition.
The cooling-off period starts at two months. Both parties can agree to extend it by up to a further 22 months, giving a maximum total of 24 months for negotiations. Either party can opt out of the extended period at any time.
During this time, the parties negotiate directly with each other – the EUIPO does not mediate. Typical outcomes of cooling-off negotiations include:
- Withdrawal of the contested application in exchange for the opponent not pursuing costs
- Limitation of the application to specific goods or services that do not conflict with the earlier mark
- A coexistence agreement or consent letter from the opponent
- A licensing arrangement
If the opposition is settled amicably and the applicant withdraws or limits the application during the cooling-off period, the EUIPO refunds the official opposition fee of €320 to the opponent. This makes early settlement financially attractive for both sides.
The cooling-off period is also a strategic opportunity for the applicant to challenge the validity or scope of the earlier mark. If the opposing mark has been registered for more than five years, the applicant can request proof of genuine use – and if use cannot be demonstrated, the opposition may fail in part or entirely.
7. Proof of use: a powerful defence tool
EU trademark law operates on a “use it or lose it” principle. A trademark that has been registered for more than five years must be genuinely used in the EU for the goods and services for which it is registered – failing which, it becomes vulnerable to revocation, and its utility in opposition proceedings is severely limited.
In opposition proceedings, if the earlier mark has been registered for more than five years at the time the contested application was filed, the applicant can formally request that the opponent prove genuine use of the earlier mark. If the opponent cannot provide sufficient evidence, EUIPO will disregard the earlier mark to the extent that use has not been proven – and the opposition may fail for those goods or services.
What counts as genuine use? The evidence must show:
- The place of use (within the EU)
- The time of use (within the relevant five-year period)
- The extent of use (sufficient commercial volume, not merely token use)
- The nature of use (the mark as registered, or in a form that does not alter its distinctive character)
Use of the mark in combination with other words (for example, always as part of a composite sign) may not count as use of the standalone mark. Similarly, evidence from outside the EU carries little weight. Affidavits from the trademark owner’s own employees are given less probative value than independent third-party evidence. Sales figures, invoices, advertising materials, and web analytics from EU-based traffic are among the most effective forms of evidence.
The proof of use requirement is a powerful strategic tool – both offensively and defensively. As the PATENTBOX case study below illustrates, identifying that an opponent’s earlier marks have been registered for over five years and that genuine use appears limited can fundamentally change the dynamics of an opposition and open up strong negotiating positions.
8. Costs of a trademark opposition at the EUIPO
The main cost items in an EU trademark opposition are:
- Official EUIPO opposition fee: €320, payable within the three-month opposition window. If the opposition is settled during cooling-off and the application is withdrawn or limited, this fee is refunded.
- Trademark attorney fees for preparing the notice of opposition – the first substantive document identifying the grounds and earlier rights.
- Trademark attorney fees for the statement of grounds – the full legal argument and evidence, filed after the cooling-off period.
- Trademark attorney fees for a counter-reply, if the applicant responds and further submissions are needed.
- Costs of gathering and presenting evidence of use, if the opponent’s earlier mark is over five years old and the applicant raises a proof-of-use request.
The winning party is awarded costs by the EUIPO, but the recoverable amount is capped at a fixed scale – typically around €300 for the opponent’s legal representative fees, which rarely covers actual professional costs. The practical implication is that even if you win an opposition, you should not expect full cost recovery. The same is true in reverse: even if you lose as the applicant, the financial exposure from an adverse costs decision is relatively modest by litigation standards.
Total costs for a straightforward opposition (from filing through to a first-instance EUIPO decision) typically range from a few thousand euros to significantly more, depending on the complexity of the case, the number of exchange rounds, and whether evidence of use needs to be compiled and challenged.
9. Real-life trademark opposition cases: lessons from practice
Case 1: Apple vs. Yichun Qinningmeng Electronics – citrus logo (EUIPO, 2026)
A recent case that illustrates how reputation-based opposition works in practice. A Chinese company, Yichun Qinningmeng Electronics, applied to register a logo depicting a citrus fruit with a detached leaf and a missing section on its right side – for keyboards, computer accessories, and solar panels.
Apple opposed the application for the computer-related goods, arguing that the citrus logo was visually similar to its own famous bitten apple logo, and that registration would allow the applicant to take unfair advantage of Apple’s reputation in the EU (Article 8(5) EUTMR).
The EUIPO acknowledged that the logos were not highly similar visually – there were obvious differences in shape, colour, and overall impression. Nevertheless, the Opposition Division ruled in Apple’s favour for keyboards and computer goods, finding that consumers encountering the citrus logo on computer-related products were likely to establish a mental link with Apple’s mark, and that this link would allow the applicant to benefit from Apple’s reputation without due cause.
However, the opposition failed for solar panels. The EUIPO found that Apple’s reputation did not extend to solar energy products, and that consumers would not make an association between a citrus-logo solar panel and the Apple brand.
What this case teaches: reputation-based opposition is a nuanced tool. It can succeed even without strong visual similarity, if the opponent’s mark has a sufficiently high degree of reputation and the goods are connected to that reputation. But it will not succeed across all product categories regardless of the mark’s fame – the connection between the goods and the earlier mark’s reputation must be credible.
Case 2: Hacker-Pschorr vs. HACKER SPACE – wrong grounds, failed opposition (EUIPO and General Court, T-349/22)
A cautionary tale about procedural precision. The German brewer Hacker-Pschorr Bräu GmbH opposed a trademark application for “HACKER SPACE”, relying on its earlier marks including “HACKER” and “HACKER-PSCHORR”. When filing the notice of opposition online using the EUIPO form, the opponent ticked only the box for Article 8(1)(a) – double identity.
In its later substantive submissions, Hacker-Pschorr sought to argue likelihood of confusion under Article 8(1)(b) – a different and more commonly applicable ground. EUIPO’s Opposition Division initially allowed this and partially upheld the opposition. However, the Board of Appeal reversed the decision, finding that likelihood of confusion had not been properly invoked at the time of filing and could not be added after the opposition period had expired. The General Court confirmed this interpretation.
The result: the opposition failed entirely, not on the merits, but because the wrong box had been ticked in the online filing form.
What this case teaches: the grounds stated in the notice of opposition are locked in at filing. You cannot extend or change them once the three-month opposition window has closed. Ticking the wrong ground – or forgetting to tick an applicable one – can sink an otherwise strong opposition. This is one of the clearest arguments for having an experienced trademark attorney handle the filing, not just the substantive arguments.
Case 3: Red Bull vs. Monster Energy – “Red Dawg” (successful reputation-based opposition)
Monster Energy sought to register the mark “RED DAWG” for energy drinks and non-alcoholic beverages (Class 32). Red Bull opposed on the basis that its RED BULL mark had a significant reputation in the energy drinks market, and that Monster’s “RED DAWG” would take unfair advantage of that reputation.
Monster argued that, given its own significant global brand and market position, it had no need to piggyback on Red Bull’s reputation. The adjudicator rejected this argument. The analysis focused on whether the mark selection itself suggested an intent to benefit from the association with Red Bull’s reputation – and the implicit connection was found to be sufficient to uphold the opposition.
What this case teaches: even well-established competitors are not immune from reputation-based opposition. The mere fact that your brand is well-known in its own right does not provide a defence against an Article 8(5) claim if the mark you are seeking to register will be associated with a competitor’s famous brand by the relevant public.
Case 4: a PATENTBOX case study – proof of use as a negotiating tool
PATENTBOX represented a client whose EU trademark application was opposed by a foreign company. The opposition covered only a narrow range of goods and services. Before engaging on the merits, our attorneys analysed the earlier marks cited by the opponent.
The analysis revealed that the opponent’s earlier marks had been registered for more than five years and that an online search gave no indication of genuine commercial use for all the goods and services covered. This meant the client was in a strong position to request proof of use in the opposition proceedings – a request that, if granted, could have eliminated a significant portion of the earlier marks as a basis for opposition.
Armed with this analysis, rather than waiting for the merits phase to begin, our client entered the cooling-off period with a clear and credible negotiating position. The opponent, aware that a proof-of-use request would likely succeed for part of the registered scope, agreed to withdraw the opposition entirely during the cooling-off period. The official opposition fee of €320 was refunded.
What this case teaches: the strength of an opposition depends heavily on the actual use of the earlier mark. A thorough preliminary analysis – including checking the registration date of the earlier marks and searching for evidence of their commercial use – can transform what looks like a problematic opposition into a strong negotiating position. And the cooling-off period is a genuine opportunity to resolve disputes efficiently and cost-effectively when both sides have a realistic view of the merits.
10. Defending against an opposition: strategy and options
If your EU trademark application has been opposed, you have several options. The right strategy depends on a careful analysis of the opponent’s earlier rights, the strength of the opposition grounds, and your commercial objectives.
Key defensive tools and options include:
- Request for proof of use – if the opponent’s earlier mark has been registered for more than five years, formally requesting proof of genuine use can significantly limit or eliminate the opponent’s basis for the opposition.
- Challenging the similarity of the marks – arguing that the signs are not sufficiently similar to create a likelihood of confusion, taking into account visual, phonetic, and conceptual differences.
- Challenging the similarity of goods or services – arguing that the goods or services covered by the two marks are not similar enough to generate a risk of confusion, even if the marks themselves are similar.
- Limitation of the application – voluntarily narrowing the list of goods or services to remove the conflict, allowing the mark to proceed for the remaining scope. This can be done at any stage of the proceedings.
- Negotiation and settlement during the cooling-off period – exploring coexistence agreements, consent letters, or limitations that allow both marks to exist without conflict.
- Filing a revocation or invalidity action against the earlier mark, if there are grounds to challenge its validity or demonstrate non-use. A successful revocation eliminates the earlier right as a basis for the opposition.
- Appeal – if EUIPO’s first-instance decision goes against you, an appeal to the EUIPO Board of Appeal is available within two months. Further appeal to the EU General Court and ultimately the Court of Justice of the EU is also possible.
If a trademark application is ultimately refused following a successful opposition, the applicant has the option to convert the EU trademark application into national applications in individual EU member states where the earlier right does not have effect. This may preserve some territorial protection even where EU-wide registration has been blocked.
11. Why trademark monitoring is essential
The three-month opposition window is strict and non-extendable. If you do not discover a conflicting application until after it has been published – or worse, after it has been registered – your options are much more limited and expensive. Cancellation of a registered trademark on relative grounds is possible but procedurally different from opposition and does not benefit from the same cost structure.
Trademark monitoring means systematically scanning new trademark publications at EUIPO (and, depending on your interests, at national offices and WIPO) for applications that are identical or similar to your marks in the same or related classes. When a conflict is identified, you have the full three-month window to decide whether to oppose, negotiate, or take no action.
Without monitoring, the three months can pass before you even become aware of the conflicting application. With monitoring, you are always in a position to act – or to make an informed decision not to.
PATENTBOX offers trademark monitoring services designed to ensure that clients are notified of conflicting applications in time to respond within the opposition window.
12. How PATENTBOX can help
PATENTBOX is a specialist IP law firm and trademark firm based in Poznań, Poland, offering full-service EU trademark opposition support before the EUIPO. Our trademark attorneys represent clients both as opponents and as applicants defending against opposition – and we advise on the strategic decisions that determine the outcome before the first document is ever filed.
We help clients with:
- Pre-filing analysis of the opposition position: strength of earlier rights, risk of proof-of-use requests, likelihood of confusion assessment
- Filing the notice of opposition on time and with the correct grounds indicated
- Drafting the statement of grounds and all subsequent submissions
- Cooling-off negotiations and settlement strategy
- Proof-of-use requests and challenges
- Defence against opposition: responding to grounds, limitation strategy, coexistence negotiations
- Revocation and invalidity actions against earlier marks used as the basis for opposition
- Appeals to the EUIPO Board of Appeal
- Trademark monitoring to ensure you never miss an opposition window
Facing an opposition or considering filing one? Contact PATENTBOX for an initial consultation with a qualified trademark attorney.
This article is intended for general informational purposes only and does not constitute legal advice. For advice specific to your trademark situation, please consult a qualified trademark attorney or IP law firm.