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Trademarks: What is the opposition process? By: AGP Law

This article intents to provide a short guide for the Trademark Opposition Procedures before the EUIPO

In practice the registration of the European Union Trademark (EUTM) is very popular among owners of trademarks. The distinctive feature is that a registered trademark is subject to protection in all countries of the EU without exception (EU trademark registration countries). This fact represents a sufficient advantage for business entities and entrepreneurs who plan to do business within EU in general. The registration shall be carried out by the European Union Intellectual Property Office (EUIPO), which is the European authority for trademark and design protection (its former name – the Office for Harmonization of the Internal Market (OHIM)).

We have already written about registration of trademarks, which is obviously the first step on the way to protect and use them effectively. However, within the process of registration there is a risk of being involved in the process of EUIPO opposition committed by third parties alleging they possess earlier rights to the respective trademark. In addition, after successful registration of the trademark its owner has to monitor the submission of new applications with respect to it in order to prevent and disclose any possible infringements of its rights.

The EUTM opposition procedure is deemed to be an administrative process under trademark law which allows third parties to challenge the validity of a pending trademark application or a registered trademark. Such opposition may be filled with the EUIPO. The opposition process provides third parties with the opportunity to challenge an application for a particular trademark based on its earlier rights. This option shall be taken into account by the applicant as subject to the existence of some grounds which exclude the registration of a trademark.

The applicant who later becomes an owner shall also regularly monitor the later applications with respect to its trademark. It may be complicated and sometimes requires professional assistance (our firm has the respective expertise and knowledge and is ready to provide you or your company with the services of qualified assistants). To conduct a search, Trademark Watch service may be used in order to trace new applications for registration of identical or similar trademarks.

What is the time period for filing a notice of opposition?

A notice of opposition may be filed within three months following the date of official publication of the EU trademark application (i.e. the date of publication of application in the European Union Trade Marks Bulletin). Such official publication is made with the purpose (not exclusively) of informing interested parties of the potential registration of particular trademark. After the date of submission of opposition, there is a “cooling off’ period of two months which may be extended by 22 months. This period is designated to conduct negotiations between the parties involved in the opposition process. Based on the results, the parties may reach an agreement between them and regulate the issue as they deem necessary.

What are the grounds for EUTM opposition?

The opposition shall specify the grounds on which it is based, namely the rights held by the interested party to an earlier trademark. Such grounds may be found in Article 8 (Relative grounds for refusal) EUTMR (Article 8(1) to 8(5) EUTMR). “Earlier rights” must have the date (but not hour or minute) of application for registration of a trademark preceding the date of disputed application (or earlier claim priority date). In other words, an interested party must prove its ownership to the trademark anywhere in the world based on the registration or use (if applicable).

Absolute grounds to reject registration relate to descriptiveness, genericness, fraud etc., and they are examined ex officio by the EUIPO. The opposition may be based exclusively on relative grounds which entail some kind of conflict between the parties with respect to the same trademark on the basis of the earlier rights. For instance, relative grounds are the following: disputed application is identical/similar to the trademark registered prior to the date of such an application; the trademark conflicts with a “well-known” trademark within the meaning of the Paris Convention, etc.

What other important aspect should be taken into account?

  • Please note that in order to file with the opposition it is necessary to pay an official fee of €320 (so-called opposition fee).
  • The details of the opposition must be clear. The most important is to indicate the above-mentioned relative grounds for opposition based on the earlier rights with detailed information of application/registration numbers, priority claims, representations of trademarks, etc. It is also necessary to clearly indicate all the details of the application being contested and the applicant’s details and the remaining formalities.
  • The notice of opposition shall be submitted to the EUIPO in writing (including electronic means).
  • The language of opposition may be English, French, German, Italian or Spanish.

What is the short procedure for consideration of opposition?

If the time limits are respected and the official fee has been paid, the proceeding is conducted by the Opposition Division of EUIPO and typically includes an exchange of observations from both parties. If the parties have not settled their dispute amicably, the Opposition Division considers all the materials and renders the respective decision and either rejects the contested application in full or in part or rejects the opposition. If the opposition was successful, the respective application is subject to registration. The decision may be appealed against. It should be noted that based on the prescribed grounds the proceeding can be suspended.

Conclusion

To sum up, registration of a European trademark is an effective method of securing legal protection of a trademark as a valuable asset of an undertaking throughout the EU and to prevent its unauthorized use by any third parties. However, it is necessary to remember that within the process of registration of your trademark the opposition process can take place both with respect to your application and with respect to an application by a third party if it is connected with a trademark which conflicts with your trademark. In this case, whatever role you play, you will require professional competent advice which you can get through AGP & Co.  Our firm will prepare all the necessary documents and submissions, ensure that the deadlines are met and in general do all the best in order to reach the most favourable outcome for our client. We will help you to choose the best strategy whether by negotiations or start the procedure of opposition or defense against such a procedure depending on the circumstances.

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