Would you like to file an opposition against a trademark registration or have you yourself been affected by opposition proceedings against your registered trademark? This specialist guide provides all the key information on the opposition procedure in trademark law!
Find out, among other things, how holders of an earlier trademark can defend themselves against a new application, what opposition deadlines apply to a trademark application, what opposition proceedings cost and what defence options are available to those who receive an opposition.
1. The opposition procedure in trademark law
For a trademark to claim trademark protection for specific goods and services, it must be filed for registration in the relevant trademark register. This gives the trademark owner the right to exclude third parties from using the sign and to take legal action against violations. The opposition procedure in trademark law plays a considerable role in this. Because companies frequently file trademark applications without first conducting a professional trademark search. As a result, trademarks are filed that already exist in identical or similar form.
It should be noted here that neither the DPMA nor the EUIPO or WIPO check, when examining a newly filed trademark, whether any earlier trademark rights might stand in the way of the new application. The trademark offices examine trademark applications only for the existence of absolute grounds for refusal, such as lack of distinctiveness or a need to keep free.
In order to learn in good time of a new trademark application that might infringe the earlier trademark, it is advisable to establish strategic and professional trademark monitoring, which we as a specialised trademark law firm are happy to undertake for you. If, for example, within the framework of such trademark screening it is established that a later trademark has been registered in the trademark register that is similar or even identical to one's own trademark and thus creates a likelihood of confusion with one's own trademark, action can be taken against the registration of this trademark through opposition proceedings before the relevant trademark office.
Trademark owners can (and sometimes must) also proceed against the alleged trademark infringement by civil law means through a trademark law cease-and-desist notice and an injunction or cancellation action, or apply for the issuance of a preliminary injunction. However, civil court proceedings are often quite protracted and involve significantly higher procedural costs than opposition proceedings. The opposition procedure before the relevant trademark office is therefore a sensible legal remedy for the trademark owner to take cost-effective and effective action against a sign conflict.
2. Who can file an opposition against a trademark registration?
In principle, any trademark owner (German trademark, EU trademark or IR trademark) or holder of a business identifier or company sign can file an opposition against a new trademark registration.
An opposition can, however, also be filed by persons who are entitled to assert rights arising from a protected designation of origin or a protected geographical indication with earlier priority. Geographical indications or designations of origin are names of places or landscapes or other geographical indications that designate the origin of goods. They indicate to buyers and consumers in commercial dealings the region in which the goods were produced or processed (e.g. "Allgäuer Bergkäse", "Nürnberger Lebkuchen").
3. The course of the opposition procedure in trademark law
If, as a trademark owner or holder of a company sign, you are of the opinion that a new application infringes your earlier priority trademark, you should follow these steps in order to be able to take action with an opposition against the later trademark:
Step 1: Check the opposition deadline
First, it must be checked whether filing an opposition is still possible at all. An opposition against a trademark registration is admissible if the opposition is filed within three months of the publication of the contested registration (German trademark) or application (EU trademark).
Since publications of new trademark applications are often not regularly tracked, many trademark owners miss the short opposition deadline and therefore lose their legal remedy.
After the opposition deadline has expired, the trademark receives a legally secure status and an opposition can no longer be filed. Holders of earlier trademarks are not left without protection and can take action against a registration with a cancellation action. However, this is considerably more burdensome.
Step 2: Check the likelihood of confusion
If the opposition deadline can still be met, it should further be checked whether a likelihood of confusion actually exists between the earlier priority trademark and the later trademark.
The likelihood of confusion between two trademarks is assessed primarily according to three criteria:
- How similar are the signs (how are they written and pronounced)?
- How similar are the goods and services in question?
- And: How strong is the distinctiveness of the earlier trademark?
When assessing the likelihood of confusion, numerous aspects and the relevant case law must be taken into account. The devil is in the detail.
Step 3: File the opposition
If there is a possibility of a likelihood of confusion, the trademark owner must file an opposition in writing or electronically with the competent trademark office, preferably using the forms provided for this purpose. The opposition can also be filed by a trademark attorney on behalf of the trademark owner.
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4. Opposition at the DPMA
The DPMA (German Patent and Trademark Office) is responsible for opposition proceedings when trademark law disputes at the national level are concerned, i.e. when infringement of German trademark law is asserted.
After the publication of a new German trademark registration in the electronic trademark gazette, holders of earlier German trademarks or identifiers, earlier EU trademarks or earlier IR trademarks can file an opposition with the DPMA against the trademark registration, § 42 para. 1 sentence 1 MarkenG. The earlier opposition trademark on the basis of which action is taken does not necessarily have to be a German trademark; it only has to apply to the same legal territory as the later trademark. The right to file an opposition for persons who are entitled to assert rights arising from a protected designation of origin or a protected geographical indication with earlier priority arises from § 42 para. 1 sentence 2 MarkenG.
The opposition fee (currently €250.00, as of November 2021) must also be paid within the 3-month period. If the payment is only received after three months, the opposition is deemed not to have been filed. The opposition deadline cannot be extended.
Requirements for the opposition at the DPMA
The filing of the opposition against a new trademark application must be in writing or electronically and is subject to strict formal and substantive requirements under the Trademark Ordinance, specifically §§ 29, 30 MarkenV. It is sufficient if the transmission of the opposition reaches the DPMA within the opposition deadline by fax or scanned by email. A handwritten signature is required on the original.
Under § 29 MarkenV, a separate opposition is required for each trademark, business identifier, protected designation of origin or geographical indication on the basis of which an opposition is filed against the registration of a trademark. If all opposition signs belong to the same holder, however, only one opposition exists.
A form should be used for filing the opposition, which can be downloaded from the DPMA's website. What information the opponent must provide for the opposition arises from the forms and § 30 MarkenV.
When filing the opposition, the opponent must decide on which trademark to base the opposition and whether all goods and services of that trademark should be taken into account for the opposition. A permissible restriction of the opposition is also still possible after the opposition deadline has expired; expansion or reversal of an earlier restriction, on the other hand, is not. These details can not only affect the general success of the opposition but can also play an important role when deciding who must bear the costs of the opposition proceedings. If the opposition against a trademark registration is drawn too broadly, a partial rejection is threatened.
There is no obligation to provide reasons for the opposition as a condition of admissibility, unlike in EU trademark law. In order to positively influence the DPMA's decision, reasons are nevertheless frequently attached. In the opposition document, the opponent therefore only needs to communicate that in their view a trademark infringement exists.
Withdrawal of the opposition
The withdrawal of the opposition is possible until the final determination of the respective opposition decision, i.e. also still within the deadline for filing the permitted or non-permission-required legal complaint. Consent from the holder of the opposing trademark is not required. If an opposition resolution has already been issued in favour of the opponent, the resolution is without effect under § 269 para. 3 sentence 1 ZPO. The cost decision contained in the opposition resolution is, however, unaffected by the withdrawal.
Service of the opposition and "cooling off" phase
As soon as an opposition has been filed, the opposition document is served on the holder of the trademark against which the opposition has been filed by the DPMA.
After service of the opposition, the so-called "cooling off" phase begins, in which the parties have the opportunity to reach an out-of-office settlement. It precedes the adversarial part of the proceedings (in which the opponent and the applicant participate). If the adversarial phase has not yet begun and the parties reach a settlement that ends the opposition, no costs are imposed on either party. The "cooling off" period lasts two months and can be extended jointly by both parties.
If no settlement is reached during the "cooling off" phase, the parties are given alternating opportunities to present arguments for the protection of the trademark or for its cancellation. First, the opposition recipient must substantively explain within a two-month period why they are of the view that no trademark infringement can be considered through the registration of their trademark. Subsequently, the opponent must rebut the opposition recipient's arguments. The parties' submissions regarding the inability to protect the registered opposition trademark or the contested trademark, and objections outside the formal trademark law (e.g. prior use of the contested trademark) or outside the statutorily defined grounds for opposition (e.g. contractual obligations) are irrelevant to the assessment of the likelihood of confusion in the opposition proceedings.
An opposition against a trademark registration can therefore extend over many months.
DPMA decision – legal consequences of the opposition
Whether the opposition against a newly filed trademark is well-founded, i.e. whether a likelihood of confusion exists, is then examined by the DPMA and decided in the form of a resolution. In this resolution, the office also decides on the costs of the opposition proceedings. The cost decision covers all costs of the proceedings, i.e. the fees and disbursements of the DPMA as well as the costs of the parties involved.
If the DPMA affirms a likelihood of confusion for all or for some of the goods or services for which the later trademark is registered, the opposition is upheld and the registration of the trademark is wholly or partially cancelled, § 43 para. 2 sentence 1 MarkenG. Otherwise the opposition is rejected, § 43 para. 2 sentence 2 MarkenG.
Legal remedies against the DPMA opposition resolution
Against the opposition resolution, the legal remedy of review (§ 64 MarkenG) and/or appeal (§ 66 MarkenG) can be filed.
The review must be filed with the DPMA within one month of service of the opposition resolution. Against the DPMA's decision in the review proceedings, an appeal to the Federal Patent Court (BPatG) is possible within one month of service. Instead of the review, an appeal can also be filed directly (§ 64 para. 6 sentence 1 MarkenG).
5. Opposition at the EUIPO
In opposition proceedings before the EUIPO, the rules of the EU Trademark Regulation apply, which in substance largely correspond to the provisions of German trademark law. The opposition at the EUIPO therefore proceeds similarly to the DPMA; however, there are also some significant differences in places.
Newly filed EU trademarks are published in the EU Trademark Gazette. At this point, the EU trademark – unlike a published German trademark – has not yet been registered. For registration to take place, the three-month period must first elapse, within which holders of earlier rights can file an opposition against the registration of the EU trademark, Art. 46 para. 1 EUTMR. The EU trademark is only registered if no opposition is filed within this period. If an opposition against one or more trademark applications has been filed, the trademark is only admitted to registration once all filed oppositions have been resolved or concluded.
The opposition fee (currently €320, as of November 2021) must also be paid within the 3-month period. If the payment is only received after three months, the opposition is deemed not to have been filed, Art. 46 para. 3 EUTMR. The opposition deadline cannot be extended.
Requirements for the opposition at the EUIPO
The opposition document is to be filed in writing or electronically with the EUIPO. Use of the form, which can be downloaded in the user area of the EUIPO website, is generally recommended but is not mandatory for observing the formal requirements of the opposition. It is sufficient if the transmission of the opposition reaches the EUIPO within the opposition deadline by fax or electronically.
The opposition can be based on one or more earlier trademarks within the meaning of Art. 8 para. 2 EUTMR or other earlier rights within the meaning of Art. 8 paras. 4 and 4a EUTMR (earlier business identifiers, earlier designation of origin, etc.), provided the earlier trademarks or rights asserted in the opposition proceedings belong to the same holder. If all opposition signs belong to the same holder, there is accordingly only one opposition. Otherwise, a separate opposition is required.
In the framework of the opposition at the EUIPO, the language in which the opposition is filed must furthermore be selected. This depends on the language in which the contested trademark was filed or which second language was specified for that trademark.
As with an opposition against a German trademark, with an opposition against an EU trademark it must also be precisely specified what scope the opposition is to have. The opponent must therefore decide whether the opposition is to be directed against all goods and services of the filed, later trademark or only against some of them. This determination can play a role later in the cost decision.
The opposition document to the EUIPO, unlike the opposition to the DPMA, must contain a statement of grounds with the key facts and arguments on which the opposition is based (in particular an explanation of the likelihood of confusion), as well as the identification of the evidence supporting this statement of grounds.
Course of the opposition proceedings at the EUIPO
If an opposition against an EU trademark is filed, the opposition proceedings begin. The applicant is informed of the filed opposition document and receives a copy of the submitted documents. If the opposition fee has been paid, the EUIPO checks whether the opposition against the trademark registration meets the other formal requirements contained in the regulations.
After examining the admissibility of the opposition, both parties receive a communication setting the procedural deadlines. As in the opposition proceedings before the DPMA, the parties are first granted a "cooling off" period. During this period, the parties have an incentive to reach an amicable settlement; the opposition fee can be refunded under certain conditions in the event of a settlement. The "cooling off" period expires two months after notification of admissibility. It can be extended once by 22 months and thus last up to 24 months in total.
After the "cooling off" period expires, the adversarial part of the proceedings begins. The opponent is granted two further months to submit the evidence and observations that they consider necessary in support of their opposition against a trademark application. After these two months and once the submitted evidence and (any) observations have been transmitted to the applicant, the applicant can comment on the opposition within two months. The applicant has at every stage of the opposition proceedings the option of restricting the goods and services of the application or withdrawing the entire trademark application.
The EUIPO can ask the parties to limit their observations to specific questions and admit observations on other questions at a later stage. After the parties have submitted their observations, the proceedings are closed; the matter is ready for a decision and the parties are notified accordingly.
EUIPO decision or conclusion of the opposition proceedings
The parties are free to choose how they wish to conclude the opposition proceedings. They can agree on a withdrawal of the opposition or simply and without stating specific reasons request the office to discontinue the proceedings. For this purpose it is sufficient if the parties submit a written, signed agreement to the office. No reasons are required. The office then takes all measures necessary for the discontinuation of the proceedings on the basis of this agreement.
If the opposition proceedings have not previously been concluded by the withdrawal of the opposition or the abandonment of the EU trademark application, the EUIPO decides on the opposition. If the examination reveals that the trademark is excluded from registration for all or some of the goods or services for which the EU trademark was applied (i.e. if a likelihood of confusion exists), the trademark application is rejected for those goods or services. If no likelihood of confusion exists, the opposition is rejected. If the EUIPO decides on the matter, it also makes a decision on the allocation of costs.
Legal remedies against the EUIPO decision
Against the EUIPO's decision on the opposition, the legal remedy of an appeal can be filed in writing with the Board of Appeal of the EUIPO within a period of two months after service of the decision. The Boards of Appeal are independent and are not bound by instructions in their decisions. The decisions of the Boards of Appeal can be challenged before the General Court (EGC, first instance); against the judgments of the Court, appeals can be filed before the Court of Justice of the European Union (CJEU, second instance).
6. An opposition has been filed against your trademark – how can you respond?
If the trademark office serves you with an opposition against your trademark registration, the first thing is: stay calm and do not make hasty decisions! There are various ways in which an opposition can be responded to. As already explained above, the opening of opposition proceedings only means that another trademark owner claims that your trademark infringes their earlier trademark. Whether the opposition against your trademark is actually well-founded, i.e. whether a likelihood of confusion exists, only emerges after a comprehensive examination. Oppositions are often only partially well-founded. It is therefore worthwhile to engage a specialised trademark attorney for the examination of the opposition and the development of possible defence strategies.
a) Examination of the opposition and possible pleas
In the framework of examining the opposition, it must first be checked whether a likelihood of confusion exists at all.
Even if your trademark is identical or confusingly similar to an earlier trademark, this does not mean that the opposition proceedings would be "lost" for you. There are numerous opportunities to successfully defend oneself entirely independently of the question of trademark infringement. For example, a non-use defence can be raised if the opponent has not used their trademark in the classes for which it claims protection within the last five years before the publication of your trademark.
Furthermore, the trademark register search should be used to check whether you might be able to assert an earlier counter-right against the opponent. In that case, the opponent's trademark would be vulnerable – you could turn the tables.
For an optimal defence strategy, a comprehensive analysis of the register status and the practice of decisions is therefore indispensable.
b) Decision on further action
Depending on how the examination of the opposition turns out, the following options for action arise:
Likelihood of confusion exists:
If the prospects of success are to be assessed as rather negative, i.e. the likelihood of confusion would with high probability be affirmed, consideration should be given to avoiding the legal dispute by withdrawing the trademark application. If a likelihood of confusion obviously exists and you are already using your trademark for the filed goods or services, the opponent can, in addition to the opposition, also initiate civil proceedings and assert injunction and damages claims. An opposition against one's own trademark should therefore not be taken lightly; a response should in any case be made. Often, sensible compromises can still be negotiated with the opponent even in this case (e.g. periods for using up existing stock and adjusting to changes, partial withdrawal, etc.).
Likelihood of confusion cannot be excluded:
If the examination of the filed opposition leads to the conclusion that the risk of confusion cannot at any rate be excluded, it is advisable already in the "cooling off" phase to enter into direct negotiations with the opposing party in order to conclude an out-of-office agreement that ensures the peaceful coexistence of the trademarks. This is particularly sensible when an opposition only partially has prospects of success and certain restrictions in the area of the desired goods and services can be made that the opponent can also accept. Such a delimitation or coexistence agreement is also advisable when the outcome of the proceedings is difficult to assess for both parties.
Likelihood of confusion excluded or unlikely:
If your prospects of success in the opposition proceedings against your own trademark are predominantly positive, it is advisable to actively defend the trademark. In that case, a comprehensive statement should first be submitted to the opponent and later also to the trademark office – if the opponent continues to pursue the opposition even after the "cooling off" phase – in which arguments against a likelihood of confusion are presented.
7. What do opposition proceedings in trademark law cost?
In opposition proceedings in trademark law, a distinction must be made between the costs of the office (fees) and the costs of the engaged representatives.
Fees of the trademark offices for opposition proceedings
For opposition proceedings before the DPMA, a fee of €250.00 is currently charged (as of November 2021). This covers the opposition based on one opposition sign. If an opposition is based on several earlier opposition signs of the same holder, an additional fee of €50.00 is to be paid for each additional opposition sign. If the holders differ, there are multiple oppositions, for each of which €250.00 is to be paid.
The fees for opposition proceedings before the EUIPO currently amount (as of November 2021) to €320.00.
Our legal services in opposition proceedings
In principle, there is no compulsory representation by an attorney in opposition proceedings before the DPMA and EUIPO. However, due to the far-reaching consequences and the complexity of the relevant legal questions, it is strongly advisable to engage a specialist trademark attorney for representation in opposition proceedings.
As specialist attorneys in trademark law, we provide purposeful advice to clients at every stage of the opposition proceedings and represent their interests. Our core services include:
- Examination of the opposition against a trademark application
- Filing an opposition against the application/registration of a trademark
- Defence against the opposition against the application/registration of a trademark
- Examination of counter-measures
- Conducting settlement negotiations with the opposing party in trademark disputes
- Negotiation of delimitation or coexistence agreements in trademark disputes
- Representation in review proceedings
- Representation in appeal proceedings
- Representation before the Federal Patent Court, EGC and CJEU
