Once a trademark application has successfully passed the examination of the EU Intellectual Property Office (EUIPO), it is published in the Trademarks Bulletin. The application is then open for others to oppose its registration.
EU trademark applications are open to opposition for a fixed three-month period following the date of publication of the application. This time limit cannot be extended.
The European Union trademark (“EUTM”) opposition procedure enables third parties to prevent EUTM applications from achieving a European trademark registration.
The opposition is commenced by filing a Notice of Opposition at European Union Intellectual Property Office/ EUIPO.
Opposition can only be based on the Opponent’s “Earlier Rights”, namely:
- earlier trademark application or registration.
- other earlier intellectual property rights.
Earlier Rights could prevent registration of a subsequent EUTM application if the mark applied for as a EUTM is identical or similar to the Earlier Rights and where the EUTM covers identical and/or similar goods or services to those protected by the Earlier Rights.
The opposition is a procedure that takes place before the EUIPO when a third party requests the Office to reject a EU trade mark application or an international registration designating the EU on the basis of the earlier rights it holds.
The grounds of opposition include:
- Double identity.
- Likelihood of confusion.
- Unauthorized filing by an agent.
- Non-registered earlier rights.
- Designations of origin and geographical indications.
Once the notice of opposition has been served on the applicant, the proceedings automatically enter a two-month cooling-off period, which can be extended.
The opponent has two months following the expiry of the cooling-off period to file its ‘Statement of Grounds’. This includes arguments, facts, and evidence in support of the opposition. The applicant then has two months following the opponent’s Statement of Grounds to file its response arguments, facts, and evidence in support of the application. The opponent will then be given two months to file observations in reply. The opponent’s further observations usually mark the end of evidence rounds, though the EUIPO has discretion to grant further rounds.
The EUIPO does not normally conduct hearings in opposition matters.
Before the EUIPO, opposition decisions are only taken on the basis of the papers as filed. The opposition decision is usually issued around three to six months from the close of proceedings. The successful party will be awarded costs, but the decision follows a statutory scale and is therefore unlikely to cover the actual cost of the dispute.