Trade marks are monopoly rights, meaning only their owners can use them in connection with the goods and services for which they are registered. If someone applies for an EU trade mark that is too similar to your existing trade mark, you can rely on your rights to oppose that application and prevent the mark from achieving registration.
In this guide, we explain how to oppose an EU trade mark application and what to expect from the procedure, and provide some practical tips on giving your opposition the best chance of success.
If you are reading this article because you are concerned about a trade mark application that conflicts with your existing rights, our experienced trade mark solicitors can help. We’ll review your position, advise on your options, and support you through the opposition process.
Contents:
- On what grounds can you oppose an EU trade mark application?
- What is the trade mark opposition procedure in the EU?
- What information should be included in an opposition to an EU trade mark application?
- What happens if the applicant decides to defend your opposition?
- What are the potential outcomes of an opposition to an EU trade mark application?
- How long does the EU trade mark opposition process typically take?
- What if it is too late to oppose an EU trade mark application?
- Can you appeal a decision made by the EUIPO?
- Summary
On what grounds can you oppose an EU trade mark application?
The owner of an EU trade mark, or in some cases, a licensee with the owner’s permission, can oppose an EU trade mark registration on various grounds, including the ones described below.
As will become apparent, ascertaining whether you have grounds to oppose a proposed mark is complex and requires an understanding of trade mark law and practice at both an EU and national level.
The grounds for opposing an EU trade mark application include:
- The mark applied for is identical to your mark and relates to identical goods or services.
- The mark applied for is similar to your trade mark and relates to similar goods or services, and there is a likelihood of confusion on the part of the public.
Whether the trade mark applied for is ‘similar’ to yours and gives you grounds to oppose it depends on the unique facts of your case. The key question is whether the public will associate the other business’s goods or services with you by virtue of the similarity between the marks. Answering that question involves considering the marks’ visual, aural, and conceptual similarities, as well as any differences. Conceptual similarities are concerned with the extent to which the signs communicate the same meaning. For example, marks might be conceptually similar if they mean the same thing in different languages.
Only if the marks are deemed ‘similar’ is it necessary to consider the likelihood of confusion. That confusion can be either the public mistaking one mark for the other or assuming that the other party’s goods or services are in some way economically linked with yours. Whether there is a likelihood of confusion depends on several factors, including the degree of similarity between the marks and the goods or services, the distinctiveness of the marks, and any overlap in the businesses’ respective distribution channels. - Your agent or representative has made the application without your permission. An example of when you would rely on this ground is if one of your EU distributors applied for the trade mark in their own name.
- The mark applied for affects your unregistered rights, provided those rights don’t have ‘mere local significance’. To rely on this ground, you must have the right to prohibit a third party’s use of the mark under EU or local laws. Most EU states protect unregistered rights to some extent, but the level of protection varies between countries.
- The mark applied for conflicts with your ‘well-known’ trade mark. The application doesn’t need to cover the same goods or services as yours for you to rely on this ground. You do need to prove that your mark is ‘well-known’ and that the mark applied for would take unfair advantage of or be detrimental to your trade mark’s reputation.
What constitutes a ‘well-known’ trade mark depends on the circumstances. Sometimes, a trade mark might be so well-known (for example, ‘Google’) that the public would recognise it in practically every context. In cases involving these types of marks, the probability of the public making a link between the marks might be so obvious that an unfair advantage or detriment to the original mark will be assumed. In other cases, a mark might not meet the threshold for being ‘well-known’ despite having a significant reputation, if that reputation is limited to one sector.
What is the trade mark opposition procedure in the EU?
You must file your opposition within 3 months of the trade mark application being published. This time limit can’t be extended, and preparing an application can take some time, so it’s essential to seek swift advice on any application you feel may be problematic.
Once you’ve filed your notice of opposition, the EUIPO will assess its admissibility. If everything is in order, the EUIPO will send notifications to both parties, detailing the applicable deadlines for the remaining steps in the procedure. The parties can request extensions of time as the matter progresses should they need to.
There follows a cooling-off period within which the parties should try to resolve the matter amicably. The cooling-off period lasts for an initial period of 2 months, but can be extended to a maximum of 24 months with the consent of both parties. Either party can opt out of the additional cooling-off period at any time. Most oppositions are settled during the cooling-off period.
If the parties can’t reach an agreement during the cooling-off period, they must submit evidence in support of their positions. The opponent must submit their evidence within 2 months, following which the applicant has 2 months within which to reply.
Once all evidence has been submitted, the EUIPO will consider it and decide whether the earlier rights should prevail and the application should be rejected in whole or in part or whether the mark should proceed to registration. The EUIPO will then notify the parties of their decision.
If the unsuccessful party wishes to appeal, they must file their notice of appeal within 2 months of the date of notification of the decision. An appeal must contain a statement of grounds, which the party can file at the same time as their notice of appeal or separately within 4 months after notification of the decision. Appeals against EUIPO decisions are considered by the Boards of Appeal of the EUIPO.
What information should be included in an opposition to an EU trade mark application?
The EUIPO requires that the following basic information be provided in any trade mark opposition:
- The opponent's details.
- Any representative's details. You’ll need a representative if you aren’t domiciled in the European Economic Area or don’t have a principal place of business or a real and effective commercial establishment there.
- The number of the EUTM you are opposing.
- Your grounds of opposition.
You should also provide evidence in support of your position, either when filing your opposition or when the cooling-off period has expired.
Clear, carefully crafted evidence can be the difference between an opposition succeeding and failing. The types of evidence you should file depend on the ground on which you rely. Our trade mark solicitors will advise you on the evidence required in your case, which might include:
- Your certificate of registration or extracts of the trade mark register showing your earlier registered mark.
- Proof of your use of the mark. The applicant can request proof of use if your mark has been registered for not less than 5 years. Evidence of use must establish the nature and extent of your use, together with the place and time. Examples of the types of documentation that can assist include:
- Invoices and other sales records for goods or services using the trade mark.
- Marketing and advertising materials, such as packaging, brochures, catalogues, and website printouts.
- Advertising and marketing expenses.
- References to the mark in any professional publications.
Trade mark classes cover a variety of goods. To defeat a trade mark application, you may need to prove your use of your mark in connection with the specific goods and services applied for by the other party and not just in connection with some of the goods in the relevant class.
- To prove a likelihood of confusion, you’ll need evidence of the similarities between the two marks as well as the goods and services they are used in connection with. Further evidence that can assist includes proof that your mark has a significant reputation, public recognition of your mark, any crossover between your business and that of the applicant, and your geographical reach.
What happens if the applicant decides to defend your opposition?
When the EUIPO notifies the applicant of your opposition, they can choose to either withdraw their application or defend your opposition.
If they decide to defend your application, the opposition moves to the evidence rounds once the cooling-off period has expired. The applicant can request that you provide proof of use for any marks older than 5 years old, which you must supply. If you can’t prove genuine use, your opposition will fail.
When both parties have submitted all their evidence, the EUIPO will consider it and make its decision.
What are the potential outcomes of an opposition to an EU trade mark application?
There are three potential outcomes to your trade mark opposition:
- Your opposition succeeds, and the EUIPO rejects the trade mark application.
- Your opposition fails, and the EUIPO accepts the application.
- Your opposition succeeds in part, and the EUIPO registers the mark for some goods or services. An example of when it might do this is if the EUIPO decides that only some of the goods and services applied for are similar to those for which your trade mark is registered. In that case, there can be no likelihood of confusion between the marks in connection with the goods and services that differ from yours. Your opposition would fail insofar as those goods or services are concerned.
How long does the EU trade mark opposition process typically take?
How long your opposition will take depends on a number of factors. If the parties file their evidence on time and don’t extend the cooling-off period, the matter might be concluded in a few months, subject to any delays at the EUIPO. If the parties extend the cooling-off period and request extensions of time for filing their evidence, the matter can last for 2 years or more.
What if it is too late to oppose an EU trade mark application?
As we have explained, the 3-month deadline for filing an opposition to an EU trade mark can’t be extended. If you miss it, you won’t be able to oppose the application.
While the opposition procedure is your best chance of dealing with a problematic mark, all is not lost if you miss the deadline. You may subsequently be able to invalidate the trade mark on the same grounds as those applicable to oppositions. If your application succeeds, the trade mark will be removed from the register with retroactive effect. You may also be able to bring infringement proceedings against the owner of the other mark. If your claim succeeds, the other party will be ordered to stop using their mark insofar as their use infringes your rights. They may also be ordered to pay you damages.
Can you appeal a decision made by the EUIPO?
Either party can appeal the EUIPO’s decision if they are unhappy with it. Your first port of call for appeals is the Board of Appeals, followed by the General Court of the European Union. One final appeal can be made to the Court of Justice of the European Union, but only on questions of law.
Most opposition decisions are upheld on appeal, reiterating the need to present your very best case the first time around. Everything depends on the facts of your individual case, which our trade mark solicitors will assess to advise you on your likelihood of success.
Summary
Opposing an EU trade mark application allows you to prevent potentially damaging marks from ever gaining registration. Compared to other trade mark processes, such as infringement proceedings, opposition proceedings are a relatively quick and cost-efficient way of maintaining the monopoly granted by your trade mark.
Our trade mark solicitors have extensive experience in assisting businesses in navigating the EU trade mark opposition procedure. If you require help with opposing an EU trade mark, please contact us for an initial no-obligation consultation.
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