When to Oppose a Trademark

The legal framework

Opposition is an administrative procedure before the trademark office, in which the owner of an earlier right asks the office to refuse a later application, in whole or in part, before it becomes a registered mark. It is quicker and cheaper than court proceedings and is the first remedy to consider.

Where and when

Opposition against an EU trade mark application is filed with the EUIPO within three months of publication of the application (Article 46 of Regulation (EU) 2017/1001, EUTMR). Against a Benelux application it is filed with the Benelux Office for Intellectual Property (BOIP) within two months of publication, and that period cannot be extended. The deadlines are strict. Once they expire, the remaining route is an action for invalidity or revocation against the registered mark.

On what grounds

The most common grounds are relative grounds under Article 8 EUTMR:

• Article 8(1)(a) and (b): the later mark is identical or similar to an earlier mark, for identical or similar goods or services, with a likelihood of confusion where the signs are not identical or the goods only similar. The assessment is explained in understanding trademark similarity.
• Article 8(5): the earlier mark has a reputation and use of the later mark would take unfair advantage of, or harm, its distinctiveness or repute, even for dissimilar goods.
• Article 8(3): a mark applied for by the owner's agent or representative without consent.
• Article 8(4): an earlier unregistered mark or other sign used in the course of trade of more than mere local significance.

Opposition can be based on earlier EU marks, national marks in Member States, Benelux marks and international registrations having effect there. The BOIP procedure is based on earlier rights under the Benelux Convention.

Proof of use

If the earlier mark has been registered for five years or more when the later application was filed (or its priority date), the applicant can ask for proof that the earlier mark was genuinely used in the relevant territory for the goods and services relied on (Article 47(2) and (3) EUTMR). If the owner cannot show it, the opposition fails to the extent the mark was not used. Check your own use before you file.

The procedure

After filing, a cooling-off period starts, during which the parties can negotiate and, by agreement, extend the period. If no settlement is reached, the parties exchange arguments and evidence and the office decides. The losing party generally bears the fees and costs of the proceedings. Decisions can be appealed.

In practice

Factors that decide

The decision to oppose is a mix of legal and commercial questions.

• Strength of the conflict. Close signs for close goods in your core classes are the strongest case. A shared descriptive element is weak.
• Strength of your mark. A distinctive mark with a reputation has a wider scope. Check proof of use first if your mark is older than five years.
• Commercial impact. Is the applicant a competitor, a licensee, a possible partner? Opposition may harden positions that a negotiation could have settled.
• Cost against benefit. An opposition costs fees and time. A weak one risks costs and may weaken your position later.
• Your own record. An owner who has never enforced against similar marks may face arguments that the sign is weaker than claimed.

Alternatives

Opposition is not the only option. You can write to the applicant to negotiate a narrower specification or a coexistence agreement, which often settles the matter at lower cost. You can submit observations to the office on absolute grounds, although this does not make you a party to the proceedings. And you can leave it and consider invalidity later, bearing in mind that an owner who knowingly tolerates a later EU trade mark for five successive years loses the right to challenge it (Article 61 EUTMR).

A craft brewer owns the EU trade mark "Kaldera" for beer. Its watch reports an EU application for "Caldera" for soft drinks and mineral water. The signs are almost identical in sound, and beer and soft drinks are related beverages. The brewer's mark was registered six years ago, so the applicant may ask for proof of use. The brewer has sold under the mark throughout, with invoices to several EU countries. It opposes. During the cooling-off period the applicant agrees to withdraw the application and the matter ends without a decision. Had the brewer used the mark for only one product line, the opposition might have been narrower, or left to negotiation.

Our trademark and design watch flags such applications in time, and the portfolio and deadline technology tracks the opposition deadline once the decision is made. A lawyer confirms every computed date.

Frequently asked questions

Who can file an opposition?

Mainly the owner of an earlier mark or other earlier right, and in some cases a licensee, depending on the ground. The conditions are set by the Regulation and, in the Benelux, the Convention.

Can I extend the opposition deadline?

No. The three months at the EUIPO and the two months at the BOIP are fixed. Only the cooling-off period after filing can be extended, by agreement.

What if I miss the deadline?

You keep your rights, but you must then seek invalidity or revocation of the registered mark, which is slower and costlier.

Is opposition worth it for a weak conflict?

Often not. A negotiation or monitoring is usually more proportionate. What matters is that the decision is deliberate and recorded.

How this connects

Trademark watch and opposition brings the watch, the assessment and the opposition together. It uses our trademark and design watch to find applications in time, and our portfolio and deadline technology to follow every date.