EU trade mark 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.
International registrations designated to the EU are open to opposition between the first month and the fourth month following the date of first republication. For example, if the first republication in the Trade Marks Bulletin takes place on 15 June 2018, the opposition period starts on 16 July 2018 and ends on 15 October 2018. Again, this time limit cannot be extended.
Grounds of opposition
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.
Grounds of opposition include:
- Double identity: if the application is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;
- Likelihood of confusion: if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected;
- Unauthorised filing by an agent: the proprietor can prevent the unauthorised filing of its mark by its agent or representative;
- Non-registered earlier rights: The proprietor of earlier non-registered rights can prevent registration of a later EU trade mark application if the proprietor has the right to prohibit the use of the application. It enables rights holders to invoke a wide variety of rights protected under EU legislation or Member State laws, subject to the conditions of their acquisition and scope of protection under the applicable laws, and further provided that the right invoked also fulfils the EU law condition of use in the course of trade of more than mere local significance.
- Reputation: The proprietors of an earlier reputed registered trade mark can prevent registration of a later similar or identical EU trade mark application that, without due cause, would encroach on the earlier reputed mark.
- Designations of origin and geographical indications: The beneficiaries of the protection of designations of origin and geographical indications under EU legislation or Member State laws can oppose the registration of a later EU trade mark application.
Once the notice of opposition has been served on the applicant, the proceedings automatically enter into a two-month cooling-off period, which can be extended for a further fixed 22 month period with the consent of both parties. Each party can opt out of the extended cooling-off period at any time. If the opposition is settled amicably between the parties before the EUIPO during the cooling-off period with leads to a limitation of the application, the opponent obtains a refund of the official opposition fee.
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.
Evidence is normally given in the form of a witness statement, i.e. a legal document setting out the facts of the case. The information provided must be based on the witness’ own personal knowledge; it should stick to the facts that relate to the grounds for opposition and should not be used to present legal arguments or the opinions of the parties. Legal arguments may be made in submissions by the parties.
The EUIPO does not normally conduct hearings in opposition matters.
Where the opponent has been requested to prove use of his mark, the evidence must establish the place, time, extent and nature of use of the opposing trade mark for the goods or services for which it is registered, during the 5 years before the filing date of the opposed application, or, if the opposed application has a priority date, before such priority date. The evidence should demonstrate, for example:
- for which goods or services the trade mark has been used
- the financial turnover from sales of these goods or services under the trade mark during the five year period
- if possible, examples of sales records showing the mark in use for the goods/services for which use is claimed e.g. copies of sales invoices or similar sales records
- how the goods/services have been advertised under the trade mark, if possible with examples of such advertising from the relevant period
- the period of time during which the trade mark has been used and the geographical area in which it has been used
- how the trade mark is used in relation to the goods/services e.g. on labels, signs, invoices, advertising materials etc
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.
In the event that an opposition is successful, the applicant has the right to convert its EU trade mark application into national trade mark applications in the EU member states, for example if the opposition was based on an earlier right valid in only one or several member state(s). The right of conversion is however only available where the opposition decision does not affect a particular member state.
International registrations can be converted into national trade mark applications of EU member states and into a designation of contracting parties to the Madrid Protocol of the World Intellectual Property Organisation (WIPO).
The opposition decision is open to appeal to the Boards of Appeal of the EUIPO within two months from the date of notification of the contested decision. A more detailed ‘statement of grounds’ must also be filed within four months from the date of notification of the contested decision. A further appeal of a Boards of Appeal decision can be made to the General Court of the European Union, on questions of law and fact, and then to the Court of Justice of the European Union on questions of law only.
Length of proceedings
Assuming the opposition proceeds to a final decision in ‘normal’ circumstances, the proceedings before the EUIPO take around seven to 10 months to get to an initial decision.
Pinsent Masons’ trade mark team has significant experience in conducting opposition proceedings before the EUIPO. Should you have any questions, please do not hesitate to get in touch with the team.