EU Trademark Oppositions

When an EU trademark application is filed and published, owners of earlier rights may oppose the application.

Did you receive a ‘Communication to applicant of receipt of opposition’ from the EUIPO?

EUIPO Communication to applicant of receipt of opposition (Article 4 EUTMDR)

Example of an EUIPO opposition notice

Here’s what will happen, the steps you should take, the related costs and the risks.

Proceeding

There are several predefined steps in a standard trademark opposition before the EUIPO:

Notice of opposition – admissibility check

To oppose a trademark application, a document is filed with the EUIPO. This document contains the trademark application against which the opposition is filed, a list of the earlier rights claimed and the reasons (grounds) why the opponent believes the application shouldn’t be registered.

The EUIPO checks if the opposition is admissible.

This step takes about 1 to 3 weeks.

Cooling-off period

If the EUIPO finds the opposition admissible, it will start the opposition proceeding.

The EUIPO will first give the parties 2 months to find a negotiated agreement and end the opposition proceedings amicably.

Opponent observations

The opponent then has 2 months to file observations and arguments supporting the opposition.

Applicant observations

The applicant in turn has 2 months to respond to the observations filed by the opponent.

Opponent response

Finally, the applicant has 2 months to comment on the applicant’s observations.

In some rare cases, it may be necessary or useful to have another exchange of observations. This may occur when the case deals with complex issues or when the opponent raises a new point that is admitted to the proceedings. In this case the applicant may be given a possibility of replying.

Decision

The EUIPO usually decides on the opposition within 2 to 6 months after the final submission of observations.

 

As mentioned, this is the standard opposition process. There are many aspects to the opposition process which may cause extensions of time limits, delays or additional steps. Make sure you are not taken by surprise.

 

First steps to take

The first step should be to contact a professional. We kindly suggest that you contact our team of registered EU Trademark & Design Attorneys. Oppositions require expert knowledge of EU trademark law and case law.

Together, we can decide on steps to take. Possible steps are:

  • Contacting counterparty to come to an amicable solution;
  • Amending the trademark application;
  • Taking measures to avoid later claims for the use in practice of the trademark

Costs

If you are the applicant receiving an opposition notice, you are looking at limited costs. In a standard proceeding, you will only have to file one set of arguments. The costs will depend on the observations filed by the opponent.

Typically it takes about 4 to 5 hours to respond to the opponent’s arguments.

Risks

In case you lose the opposition, your trademark will not be registered and you will not receive a refund of the filing fees you paid when filing your trademark application.

If you are already using the trademark in the EU market, the opponent might go to court to claim damages for trademark infringement.

In its opposition decision, the EUIPO will decide on costs, with the losing party having to pay costs to the winning party.