Oppositions

An opposition is a formal objection to the registration of a new trademark application. Usually this objection is filed by another trademark owner who wants to prevent your trademark from being registered. The opposition is handled by the official trademark authorities. They assess whether your trademark application conflicts with the older rights of the opposing party.

Benelux — Up to 2 months after publication of the trademark application

European Union — Up to 3 months after publication of the trademark application
After this period, no further opposition can be filed. However, that does not mean all is well: a cancellation procedure can still be initiated at the BOIP or EUIPO, or use of the trademark can be challenged before the courts.

Oppositions are handled by the official trademark authorities such as the Benelux Office for Intellectual Property and the European Union Intellectual Property Office (EUIPO).

If no opposition was filed within the applicable period, a cancellation procedure can still be initiated at the BOIP or EUIPO, or use of the trademark can be challenged before the courts. An expired opposition period therefore does not provide complete certainty.

In broad terms, the procedure proceeds as follows:

• The trademark applicant receives notice of the opposition
• The trademark authority checks whether the opposition is admissible
• The procedure is usually temporarily suspended during the cooling-off period
• Written rounds with arguments follow
• The trademark authority issues a decision

Without a trademark registration, there is no trademark right. The starting point of an opposition or objection to a trademark is therefore always a registered right.

• A registered trademark
• An unregistered but well-known trademark

• An older trademark registration
• Sometimes also a trade name of more than local significance
• An unregistered but well-known trademark

An opposition is only dealt with on its merits if:

• the opposition is filed within the deadline
• the formal requirements are met
• the applicable fees are paid
• valid older rights are invoked

Benelux — €1,045. Part must be paid before the end of the opposition period; the remainder before the end of a further deadline.

European Union — €320

If one of the invoked trademarks has not yet been definitively registered, the opposition procedure is suspended until that registration is completed.

The opposition starts with a 2-month period during which the procedure is on hold. This period is intended to give the parties the opportunity to reach a solution together. Parties may jointly request an extension of this period. Many oppositions are settled during this phase.

After the cooling-off period, fixed deadlines apply. The opponent has 2 months to substantiate the opposition. The applicant then has 2 months to respond. These deadlines can often be extended once, by mutual request or in specific circumstances.

If the invoked trademark has been registered for more than 5 years, the applicant can request evidence of use. If the opponent cannot demonstrate that the trademark has been normally used for the relevant goods or services, the opposition will be dismissed or limited to the classes for which use has been proven.

Due to the various deadlines, and certainly when evidence of use plays a role, an opposition procedure typically takes 1 to 2 years.

The opposition procedure relates exclusively to the trademark application. Actual use of a trademark is not assessed. Only a court can rule on that.

The trademark authority declares the opposition well-founded or unfounded. If the opposition is well-founded, the trademark application is refused in whole or in part. An appeal can be filed against the decision.

In the substantive assessment, the following principles apply among others:

• Trademarks do not have to be identical in order to cause confusion
• Visual, phonetic and conceptual similarity are all considered
• The overall impression of the trademark is decisive
• The first part of a trademark often carries the most weight
• Highly distinctive trademarks enjoy broad protection
• Weakly distinctive trademarks have limited protection
• Word elements generally carry more weight than imagery
• The assessment relates to the trademark as registered, not as used

Examples from practice show that small differences are sometimes sufficient and sometimes not. Only the specific facts of each case determine the outcome.

Trademarks often touch on emotions. That makes it difficult for those involved to look at an opposition objectively. The opposition procedure is, however, a formal business matter. There is no room for a weighing of interests or heartfelt appeals.

If you are faced with an opposition, or are considering filing one yourself, it is wise to seek professional advice. We are happy to help you assess the situation and determine the best strategy.