Opposition against a European Union trademark application

Opposition against a European Union trademark application

Opposition against a European Union trademark application is a formal procedure that takes place before the EUIPO (European Union Intellectual Property Office). By filing an Opposition to the EUIPO, a person (or a company) requests the Office to reject a European Union trade mark application or an international registration designating the EU, on the basis of the earlier rights this person (company) holds.

 

Trademark and the importance of its registration

A trademark is a symbol that identifies products or services offered by a specific company. It is a key element in building brand recognition. Registering a trademark provides legal protection and exclusive rights to use that mark in a specified area and category of products or services.

To protect a trademark in the entire EU, an application for a trademark registration shall be filed to the EUIPO.

However, the EUIPO will not refuse registration of a trademark “ex officio” if it is identical or similar to an erlier existing trademark. The Office can only refuse a trademark registration  if the holder of the earlier right files a timely opposition against that trademark application.

 

What is a trademark opposition?

An opposition against an application of a trademark is a formal objection to the registration of the mark, usually due to its similarity to an existing mark or other prior rights tof the person or company, who files the opposition.

The opposition procedure is regulated by the relevant laws, which determine the conditions and criteria for admissibility of the opposition.

The opposition is filed within the intellectual property office, where the trademark was applied for registration. Hence, if the contested trademark application is a EU trademark application, the opposition shall be filed to the European Union Intellectual Property Office (EUIPO).  Official fees for the opposition apply.

In the procedure before the EUIPO, an opposition can only be filed during the 3-month opposition period. This period runs from the official date of publication of information about the trademark application.

 

Who can file an opposition?

Anyone can file a trademark opposition, claiming their right to a prior trademark or their prior personal or property rights – for example, a right to a company name.

Attention! An objection cannot be based on someone else’s trademark or someone else’s prior rights.

 

What are the grounds of opposition?

The grounds on which an opposition may be made are set out in Article 8 EUTMR.

Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered, inter alia:

  1. if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;
  2. if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
  3. if an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action;
  4. where and to the extent that, pursuant to the EU legislation or the law of the Member State governing an earlier non-registered trade mark or of another sign used earlier in the course of trade of more than mere local significance, that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark – eg. a Polish company name;
  5. if it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;
  6. if it is registered designation of origin or a geographical indication – eg. Champagne.

 

Trademark opposition procedure before the EUIPO

During the 3-month opposition period, a notice of opposition must be filed with EUIPO and the official fee must be paid. The notice of opposition must specify the grounds for opposition – including our prior rights on which the opposition is based. At this stage, there is no requirement to submit arguments to the office.

After verifying the correctness of the notice of opposition and allowing the opposition, EUIPO sets a two-month cooling-off period. During this time, attempts can be made to contact the opponent and reach an amicable resolution of the dispute. The cooling-off period can be extended by mutual agreement of both parties – in total, it can last up to 24 months.

After the cooling-off period ends, the opposing party has 2 months to submit arguments to EUIPO.

Subsequently, the applicant may respond to the opposition within 2 months.

If the opposition is based on a trademark older than 5 years (from the registration date), the applicant has the opportunity to raise the issue of non-use. In this case, EUIPO calls on the opposing party to submit evidence of the use of the mark. If the applicant fails to do so, the office will reject the opposition to the extent it is based on that mark.

If the applicant responds to the opposition, the opposing party has 2 months to submit a counter-reply, to which the applicant may respond again within 2 months. Each of these 2-month periods can be extended once for an additional 2 months.

After this, essentially double exchange of submissions, EUIPO closes the exchange stage and issues a decision. An appeal can be made against the decision within 2 months to the EUIPO Board of Appeal.

 

Trademark opposition costs

The costs associated with an opposition to a EU trademark application include:

  • Official fee of 320 euros.
  • Legal representative’s fee for preparing and filing the notice of opposition.
  • Legal representative’s fee for preparing and filing arguments in opposition.
  • Legal representative’s fee for preparing a counter-reply to the reply to the opposition.
  • Preparation and submission of evidence of trademark use, if necessary.

In the decision on the opposition, the EUIPO detcides on the costs. Typically, the losing party bears the procedural costs (official fee) and legal representative’s fees, being usually at around 300 euros in EUIPO.

 

The importance of legal assistance in a trademark opposition

Experts in the field of intellectual property law can help understand the trademark opposition process and provide adequate legal assistance. Commissioning the filing of opposition and the development of its arguments to a specialized trademark attorney can significantly increase the chances of success in the opposition.

 

We prepare and file oppositions against the trademark applications infringing our Client’s rights. We represent our Clients before the EUIPO and before the Polish Patent Office.

Ask as about our offer for filing a trademark opposition.

 

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