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