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Trademarks - Trademark Opposition - European Union

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-What is an opposition?

European Union trade mark (EUTM) applications and International Registrations designating the EU (IRdEU) are published for opposition purposes. Oppositions give an opportunity to a third party to oppose the registration of a trade mark, based on the third party's earlier rights.


-On which grounds may opposition be based?

Oppositions against EUTM applications can only be based on relative grounds, where registration of the mark would conflict with another person's existing mark(s) or earlier rights (under Art. 8 EUTMR), but not on absolute grounds which are examined ex officio by the EUIPO.


-Who can file oppositions?

Oppositions against EUTM applications can only be filed by the owner of the mark/rights on which the opposition is based or the person authorised under EU legislation or Member State laws to prohibit the unauthorised use of protected designations of origin or geographical indications as a subsequent trade mark

Types of earlier rights 

  • Earlier trade mark registrations and applications, subject to their registration (Art. 8(1a), 8(1b) & 8(5) EUTMR) - taking into account, the priorities claimed in respect of those trade marks (Art.34 EUTMR as of 01/10/2017). 
  • Earlier non-registered trade marks or other signs used in the course of trade of more than mere local significance (Art. 8(4) EUTMR)
  • Protection of designations of origin and geographical indications (Art. 8(6) EUTMR as of 01/10/2017).
  • Unauthorised filing of marks by the proprietor's agent or representative (under Art. 8(3) EUTMR)

 

 


-Where do you file an opposition?

Oppositions against EUTMs and IRdEUs can be filed with the European Union Intellectual Property Office (EUIPO) - formerly named the Office for Harmonization of the Internal Market (OHIM).

 


-Admissibility requirements for filing an opposition
  • Payment of the fee within the opposition period
  • Reception of the notice by the EUIPO in written form, including by electronic means within the opposition period
  • Translation of the opposition. The language of proceedings must be one of the five official languages of the EUIPO (EN, FR, DE, IT, ES) chosen from the two languages of the opposed EUTM application
  • Clear indication of the EUTM being opposed (application number & name of applicant)
  • Clear indication of at least one earlier mark/right on which the opposition is based (Rule 15 EUTMIR) – however a full admissibility check extends to all earlier rights if an IRdEU designation is being opposed  
  • Identification of the grounds for opposition  

Other requirements can be remedied after expiry of opposition period including:  

  • Filing, registration or priority dates of earlier rights
  • Representation of earlier marks/signs 
  • Identification of goods/services upon which the opposition is based
  • Identification of the opponent/representative
  • Signature 

 


-Proof of use in opposition proceedings

In the second part of the adversarial period following cooling-off (for the applicant to respond to the opponent's arguments), a written request can be made requiring the opponent to prove that any earlier marks registered for more than five years at the time of filing / priority claim of the EUTM have been put to real and genuine use on the market (EUTMR, Rule 22). If the opponent does not provide such proof within the time limit expires the opposition will be rejected. This request can only be made within the first submission of the applicant.



-By when should the opposition be filed?

EUTMs

The notice of opposition must be filed with the EUIPO in written form within three months from the publication of the contested EUTM application. Any notice of opposition against an EUTM application received before commencement of the opposition period will be kept on hold and be deemed to have been filed on the first day of the opposition period. 

IRdEUs

Oppositions may be filed against the International Registration designating the EU within a period of three months starting one month after the date of first republication. Oppositions filed after the republication of the IR but prior to the start of the opposition period will be held and deemed to have been filed on the first day of the opposition period.



-What is the opposition procedure?

 

  •  Filing (See previous FAQs)   
  • Notification of oppositions against IRs designating EU 

For admissible oppositions against IRdEUs, a provisional notice of refusal will be sent to WIPO, recorded in the International Register of the Gazette and sent to the IP holder. Other than this, the procedure will be directly communicated to the parties by the EUIPO.  

  • EUTM notification & Cooling-off period 

If the opposition is admissible, this is notified to the parties, indicating that proceedings will commence two months after notification. This two month cooling-off period can be used for the parties to negotiate an amicable settlement (in which case neither party will be ordered to pay costs). If both parties request an extension, cooling-off will be extended to a total 24 months from the start date of cooling-off. Both parties jointly, or either one unilaterally can end the extended cooling-off period by filing a written request to "opt out". 

  • Adversarial stage 

During the two months following expiry of the cooling-off period the opponent can file additional facts, evidence and arguments in support of its opposition. Outstanding proof of its earlier rights (existence, validity, scope of protection) and evidence of entitlement to file the opposition must also be filed during this period.

The EUIPO will then invite the applicant to file observations and will set a time limit. The applicant alone or both parties may jointly request an extension of this time limit before its expiry. The applicant may also request that the opponent prove that any earlier marks registered for more than five years have been used (See FAQ on proof of use).

Following the applicant's observations, the opponent is normally granted a final period to submit its counter-reply. However, in some cases there will be further exchanges but this is at the discretion of the EUIPO.

A joint request to suspend proceedings during the adversarial stage will be granted by the EUIPO for a period of one year regardless of the period requested. 

Once the adversarial stage is closed, the EUIPO will take a decision on the proceedings.


-How long do opposition proceedings take?

This depends on whether any extension or stays have been applied for, and whether a hearing is requested (which practically never happens). However, the EUIPO publishes a Service Charter every quarter measuring its performance against three standards: timeliness, accessibility and quality of decisions. Opposition handling time at the end of 2016 was roughly 7 months.


-What is the effect of opposition proceedings?

If the EUIPO decides that the EUTM application may not be registered for some or all of the goods or services, the application shall be refused in respect of those goods or services. Otherwise the EUIPO will reject the opposition.

A decision on costs is taken in proceedings that have passed the cooling-off period.

Where an opposition has been successful, it is still possible to convert an EU trade mark into national registrations, but not if the successful opposing right is an EUTM and not in relation to those countries in which earlier rights existed.



-How can you limit the list of goods/services to overcome the opposition?

The applicant may limit the goods and services of its application or withdraw the entire application at time during the proceedings. Such requests must be explicit and unconditional. 

If the application is withdrawn or limited to non-contested goods and services before notification of admissibility of the opposition, the proceedings are closed and the opposition fee is refunded. 

If the EUTM applications is withdrawn or restricted to non-contested goods after the end of the cooling-off period, the case is closed. Unless the parties submit an agreement on costs, the EUIPO will take a decision on costs.



-Can the decision be appealed?

Within 28 days after the date of decision of the Registrar of Trade Marks, either party may lodge an appeal to the Court of First Instance against the decision.


Key Contacts

Andreas Renck

ANDREAS RENCK

Office Managing Partner, Alicante

+34 965 1383 00

EMAIL ANDREAS RENCK
Imogen Fowler

IMOGEN FOWLER

Partner, Alicante

+34 965 1383 00

EMAIL IMOGEN FOWLER

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