Out-Law Guide | 14 Sep 2022 | 4:20 pm | 6 min. read
This brief summary explains the procedures for opposing trade mark applications in the EU and for defending an opposition. The proceedings are largely the same for EU trade mark filings as well as for international registrations designated to the EU.
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 took place on 15 June 202, the opposition period starts on 16 July 2022 and ends on 15 October 2022. Again, this time limit cannot be extended.
An 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:
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 or withdrawal 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, which is a legal document setting out the facts of the case. The information provided must be based on the witness’ own personal knowledge, 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 their 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 five 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:
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.
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.
14 Sep 2022