Filing an opposition against an EU trademark application with the EUIPO
A guide
If you want to protect your brand, must do more, when they only to register. After the application, the process begins, which many trademark owners do not keep in mind: Monitor new trademark applications (so-called brand monitoring), In the event of collisions, lodge an objection in good time and its Actively enforcing trademark rights.
Because the EUIPO checks for new EU trademark applications not ex officio, whether older Trademark rights stand in the way. Trademark owners must therefore itself observe, whether new brands are published that are too close to their brand and, if necessary in good time active become.
The contradiction is the Central instrument, which can be used to enforce existing trademark rights against new applications. In the case of Europe-wide trademark applications, these proceedings are conducted before the EUIPO - the European Union Intellectual Property Office.
Why trademark monitoring is the real first step
Since the EUIPO does not examine ex officio whether earlier identical or similar trademarks conflict with an EU trademark application, trademark owners must recognize possible collisions themselves. The protection of older trademark rights is therefore not limited to the registration of one's own trademark, but sets This also requires ongoing monitoring of new publications.
This is precisely why a Structured brand monitoring the actual first step in effective brand protection. Only if new applications are identified at an early stage can it be checked whether identity or likelihood of confusion actually exists, which goods or services are affected and whether an opposition makes legal and economic sense. Trademark monitoring is therefore not merely a service in addition to the actual procedure, but a functional prerequisite for it.
This is particularly important because of the three-month objection period. This period is strict and cannot be extended. If a Conflicting application too late recognized, the conflict can often be only in one later cancellation or nullity proceedings, which regularly clearly more elaborate is.
For trademark owners, this means that it is not the opposition itself, but the timely recognition of conflicting applications that determines whether earlier rights can be effectively enforced.
You want to have your trademark monitored by a specialist lawyer or have possible collisions checked - Arrange a free initial consultation with us now.
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Dr. Norman Dauskardt:
How does an opposition actually come about at the EUIPO?
An opposition before the EUIPO typically arises in two constellations:
Either you apply for an EU trademark yourself and a proprietor of earlier rights takes action against it by Objection to the Registration the brand inserts.
Or, as the trademark owner, you discover that a third party has registered a trademark that is too close to your own earlier trademark. Then you can itself objection be inserted.
Why doesn't the office intervene itself?
The EUIPO examines, for new registrations only whether one trademark is protectable - not whether it is free - i.e. only so-called absolute grounds for refusal. In particular, it examines questions such as: Is the trademark distinctive at all? Is it descriptive? However, it does not automatically check whether similar earlier trademarks already exist.
That sounds surprising, but it has a Reason: There are at the EUIPO million registered Brands and, accordingly, a large number of applications. A complete automatic collision check at the time of filing would hardly be legally and practically feasible - especially as similarity is always a question of context and interpretation.
This is precisely why active trademark monitoring is so important. Those who do not monitor new applications often only notice potential conflicts when the opposition period has already expired.
When is an objection possible - and when does it make sense?
An objection initially presupposes that the objecting party can rely on an earlier right.
The decisive factor is that the opponent's mark before of the contested EU trade mark application has been registered or applied for. He is therefore the proprietor of the earlier mark.
Not only older EU trademarks can be used as a basis, but also national trademarks and international registrations with protection in relevant territories, Art. 8 para. 2 UMV.
The grounds for opposition arise from Art. 8 para. 1 UMV.
Identity
An objection can be made to Dual identity if the sign and the goods or services are identical, Art. 8 para. 1 a) EUTMR.
likelihood of confusion
The objection is particularly frequent due to likelihood of confusion. It depends on whether the signs are similar or identical and whether the goods or services claimed are also identical or similar. The decisive factor is an overall assessment from the point of view of the relevant public, Art. 8 para. 1 b) EUTMR.
Trademarks with reputation, other earlier trademark rights and geographical indications
Depending on the case, an objection may also relate to Other older trademark rights to Art. 8 para. 4 UMV, on Brands with a reputation to Art. 8 para. 5 UMV and to protected designations of origin or geographical indications to Art. 8 para. 6 UMV support.
The objection period - 3 months, no exceptions
The most important thing is that an objection is not possible indefinitely.
The objection period is exactly 3 months and runs from the Publication of the contested EU trade mark application in the EU Trade Marks Bulletin (EU Trade Marks Bulletin). The day of publication does not count; the period begins on the following day and ends three months later at midnight. If the deadline falls on a Saturday, Sunday or an EUIPO holiday, the deadline is extended to the next working day.
This deadline is absolute - it can neither be extended nor restored after expiry.
Because this deadline is short and strict, trademark owners should continuously monitor new publications. If you miss the deadline, you may have to pursue your rights in subsequent cancellation or invalidity proceedings, which is usually more time-consuming and expensive.
You want to keep an eye on your brand in the long term - Arrange a free initial consultation now.
Invalidity proceedings as plan B
If the Objection period missed, is not compelling all lost. After registration of the later European Union trade mark, in principle still a Request on Declaration of nullity be provided.
This is filed with the EUIPO as an independent cancellation procedure (so-called „Cancellation proceedings“ ). Unlike in opposition proceedings, there is no cooling-off phase; instead, the application is followed by a contentious, written procedure with statements and evidence from both sides. If the application is granted, the EU trade mark is declared invalid with effect ex tunc - i.e. from the outset.
The official fee is currently 630 Euro.
In contrast to the contradiction clear more elaborate and more costly than a timely objection.
This makes ongoing trademark monitoring all the more important: it ensures that collisions are not only recognized when the more costly „Plan B“ is the only option left
What costs are incurred in the event of an objection? - Fees at a glance
The Official opposition fee at the EUIPO is currently 320 Euro. Only when the fee has been paid on time is the objection deemed to have been effectively submitted.
320 € is only the price of admission to the proceedings, not the actual total costs. In addition, there may be your own legal fees, costs for compiling usage documents, translations and internal expenses. These additional costs are not regulated as a fixed EUIPO fee; they depend on the scope of the case.
Not sure what costs you will incur? -> Arrange a free initial consultation
Not sure what costs you will incur? - Arrange a free initial consultation.
How does the objection procedure work?
Step 1: Preparation and legal review
Before lodging an objection, a thorough check should be made,
- Whether a Basis for objection exists: It must be checked whether an earlier trademark is registered and in force. Trademarks that have been canceled, expired or not renewed cannot serve as a basis.
- And whether is there really a potential for collision? Signs and the respective lists of goods/services (according to the Nice Classification) must be carefully examined. A likelihood of confusion is not a matter of course - it must be comprehensibly justified. Not every similarity is sufficient. The decisive factor is whether a viable ground for opposition under Art. 8 EUTMR can be conclusively demonstrated.
It may also be important whether the brand subject to compulsory use is. If the trademark is already registered at the time of the opposition entered in the register for more than 5 years, the other party may demand proof of genuine use (especially in step 5). Prepare the relevant supporting documents (invoices, advertising materials, sales figures, photos, etc.).
Not sure whether you can lodge an objection? -> Arrange a free initial consultation now
Step 2: File an opposition online with the EUIPO
The objection is lodged with the EUIPO electronically via the official portal. In particular, the contested application, the earlier right, the grounds for opposition and the goods or services concerned must be specified. The EUIPO provides a separate opposition form for this purpose.
Mandatory information:
- Data of the challenged trademark application (application number, owner) Use eSearch plus (in the EUIPO portal) to find the challenged trademark application. Make a note of the application number (EUTM number) and the publication date
- Data of the earlier trademark (registration number, country of protection, owner)
- Grounds for objection (e.g. Art. 8 para. 1 lit. b EUTMR)
- Goods and services against which the opposition is directed
- Contact details / representative details
Note: You can file the objection first without complete Reason in order to meet the deadline. The detailed statement of grounds can be submitted at a later stage (at the request of the EUIPO).
Step 3: Pay the fee
After completing the form, you will be redirected to the payment page. The fee must be received within the relevant deadline. If payment is not made, the objection is deemed not to have been lodged.
Step 4: Cooling-off phase - the phase for tactical and economic solutions
Once the opposition has been duly filed, the EUIPO notifies the applicant of the contested mark. Subsequently, a Cooling-off phase, in which both parties are requested to reach an amicable settlement. It not only serves to organize the proceedings, but is often the crucial strategic section of the entire appeal proceedings. In this phase, both sides are given the opportunity to discuss the conflict oto be resolved without a disputed decision. The initial duration is two months; on joint application can it can be extended to a total of up to 24 months.
The parties can agree on a Coexistence agreement, The applicant can negotiate the restriction of the list of goods and services, a partial or complete withdrawal of the application or other commercial solutions. Often the Conflict this way faster, more cost-saving and more predictable solve than in a contested decision before the EUIPO.
The cooling-off phase is therefore in many cases not only a preliminary stage of the adversarial proceedings, but the practically the most important opportunity to effectively and economically enforce trademark rights. If no agreement is reached, the proceedings then move on to the contentious phase. Many disputes are already settled at this stage.
Step 5: No agreement? - Adversarial proceedings
If no agreement is reached, the dispute phase begins:
The opposing party must substantiate its opposition and, if necessary, prove the existence, validity and scope of protection of the earlier rights. A general assertion of likelihood of confusion is not sufficient. The EUIPO expects a structured analysis: comparison of signs, comparison of goods/services, assessment of the overall impression. If admissible proof of use is required, genuine use must also be proven.
The applicant is then given the opportunity to comment. The EUIPO then decides in writing.
Can action be taken against the decision?
Yes, appeals against decisions of the EUIPO can be lodged with the EUIPO Board of Appeal can be inserted. The Complaint must be lodged within two months after notification of the decision; the fee must be paid within this period.
The Statement of grounds for appeal is to be paid separately within four months to file. For trademark complaints to the EUIPO, there is currently a Appeal fee of 720 euros on
Decisions of the Board of Appeal may be appealed to the Court of Justice of the European Union (CFI) and in the last instance at the European Court of Justice (ECJ) possible.
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What to do if an opposition has been filed against your trademark?
Anyone who is the addressee of an objection should not be too quick to consider the case lost. Depending on the situation of the case various Defense strategies can be considered. In particular, this includes examining the asserted earlier rights, disputing the similarity of the signs or goods, requesting proof of use and negotiating a restriction of the list or an amicable solution in the cooling-off phase. Proof of use can be decisive in proceedings, particularly in the case of older trademarks that have been registered for more than five years.
Has an opposition been filed against your trademark registration? - Arrange a free initial consultation.
What is decisive for EUIPO oppositions
Opposition proceedings at the EUIPO are one of the most important instruments for effectively enforcing earlier trademark rights. Three points in particular are decisive: You must recognize conflicting applications in good time, the three-month period from publication and structure the content of the objection properly. If you go into the proceedings well prepared, you significantly increase your chances of successfully defending or enforcing your rights