Anyone who wants to protect their trade mark must do more than simply register it. Because after registration, a process begins that many trade mark owners lose sight of: monitoring new trade mark applications (so-called trade mark monitoring), filing oppositions on time in the event of conflicts, and actively enforcing their trade mark rights.

Because the EUIPO does not examine, when new EU trade mark applications are filed, whether older trade mark rights stand in the way. Trade mark owners must therefore themselves observe whether new marks are published that come too close to their own mark, and act in good time when necessary.

The opposition is the central instrument for asserting existing trade mark rights against new applications. For Europe-wide trade mark applications, this procedure is conducted before the EUIPO – the European Union Intellectual Property Office.

-> A general overview of how and where a trade mark can be registered can be found in our guide "Registering a Trade Mark: Requirements, Process and Costs at a Glance".

Why trade mark monitoring is actually the first step

Since the EUIPO does not of its own accord examine whether older identical or similar marks stand in the way of a new EU trade mark application, trade mark owners must identify potential conflicts themselves. The protection of older trade mark rights is therefore not exhausted by the registration of one's own mark, but also requires the ongoing monitoring of new publications.

This is precisely why structured trade mark monitoring is the actual first step of effective trade mark protection. Only when new applications are identified early can it be examined whether there is actually identity or a likelihood of confusion, which goods or services are affected, and whether an opposition is legally and commercially worthwhile. Trade mark monitoring is therefore not a mere supplementary service alongside the actual procedure, but its functional prerequisite.

This is crucial above all because of the three-month opposition period. This deadline is strict and cannot in principle be extended. If a conflicting application is identified too late, the conflict can often only be pursued in subsequent cancellation or invalidity proceedings, which are regularly considerably more burdensome.

For trade mark owners this means: not only the opposition itself, but already the timely identification of conflicting applications determines whether older rights can be effectively enforced.

-> You want your trade mark monitored by a specialist lawyer or have potential conflicts reviewed -> Schedule a free initial consultation with us now!

How does an opposition at the EUIPO actually arise?

An opposition before the EUIPO typically arises in two situations:

Either you file an EU trade mark application yourself and a holder of older rights acts against it by filing an opposition against the application of the mark.

Or you discover, as a trade mark owner, that a third party has filed a mark that comes too close to your own older mark. You can then file an opposition yourself.

Why does the office not intervene itself?

The EUIPO examines, for new applications, only whether a mark is protectable – not whether it is free – i.e. only so-called absolute grounds for refusal. In particular it examines questions such as: does the mark have any distinctiveness at all? Is it descriptive? However, it does not automatically examine whether older similar marks already exist.

This may seem surprising, but it has a reason: there are millions of registered marks at the EUIPO and correspondingly a large number of applications. A complete automatic conflict examination at the time of filing would be legally and practically almost impossible – especially since similarity is always a question of context and interpretation.

This is precisely why active trade mark monitoring is so important. Those who do not monitor new applications often only discover potential conflicts when the opposition period has already expired.

When is an opposition possible – and when is it worthwhile?

An opposition first requires that the opposing party can rely on an older right.

The decisive factor is that the opposing party's mark was registered or applied for before the contested EU trade mark application. The opposing party is thus the owner of the older mark.

As a basis, not only older EU trade marks come into consideration, but also among other things national marks and international registrations with protection in relevant territories, Art. 8 para. 2 EUTMR.

The grounds for opposition arise from Art. 8 para. 1 EUTMR.

Identity

An opposition can be based on double identity where the signs and the goods or services are identical, Art. 8 para. 1 a EUTMR).

Likelihood of confusion

Particularly common is the opposition based on likelihood of confusion. This depends on whether the signs are similar or identical and whether the respective goods or services claimed are also identical or similar. The decisive factor is an overall assessment from the perspective of the relevant public, Art. 8 para. 1 b EUTMR).

Marks with reputation, other older rights and geographical indications
Depending on the case, an opposition can also be based on other older intellectual property rights under Art. 8 para. 4 EUTMR, on marks with a reputation under Art. 8 para. 5 EUTMR, and on protected designations of origin or geographical indications under Art. 8 para. 6 EUTMR.

The opposition period – 3 months, no exceptions

The most important thing to observe is: opposition cannot be filed indefinitely.

The opposition period is exactly 3 months and runs from the publication of the contested EU trade mark application in the EU Trade Marks Bulletin. The day of publication does not count; the period begins the following day and ends three months later at midnight. If the deadline falls on a Saturday, Sunday or a day when the EUIPO is closed, the period is extended to the next working day.

This period is absolute – it can neither be extended nor restored after it has expired.

Because this period is short and strict, trade mark owners should monitor new publications on an ongoing basis. Those who miss the deadline must pursue their rights if necessary in later cancellation or invalidity proceedings, which are regularly more burdensome and expensive.

-> You want to keep an eye on your trade mark in the long term -> Schedule a free initial consultation now.

Invalidity proceedings as Plan B

If the opposition period is missed, not everything is necessarily lost. After registration of the younger EU trade mark, an application for a declaration of invalidity can in principle still be filed.

This is conducted at the EUIPO as a separate cancellation procedure (so-called "cancellation proceedings"). Unlike in opposition proceedings, there is no cooling-off phase; instead, the application is followed by an adversarial written procedure with observations and evidence from both sides. If the application is granted, the EU trade mark is declared invalid with effect ex tunc – i.e. from the very beginning.

The official fee is currently € 630.

This route can, unlike opposition proceedings, be considerably more burdensome and costly than a timely opposition.

This makes ongoing trade mark monitoring all the more important: it ensures that conflicts are not only identified when only the more burdensome "Plan B" remains.

What must one pay for "opposing"? – Fees at a glance

The official opposition fee at the EUIPO is currently € 320. Only when the fee has been paid within the relevant period is the opposition deemed to have been validly filed.

€ 320 is only the entry price to the proceedings, not the actual total costs. To this may be added own legal costs, costs for compiling evidence of use, translations and internal effort. These additional costs are not regulated as a fixed EUIPO fee; they depend on the scope of the case.

Not sure what costs you are facing? -> Schedule a free initial consultation

How does the opposition procedure work?

Step 1: Preparation and legal review

Before filing an opposition, the following should be thoroughly examined:

  • Whether a basis for opposition exists: it must be checked whether an older mark is registered and in force. Marks that have been cancelled, have lapsed or have not been renewed cannot serve as a basis.

  • And whether there is actual conflict potential: the signs and the respective lists of goods and services (according to the Nice Classification) must be carefully examined. A likelihood of confusion is not self-evident – it must be coherently justified. Not every similarity is sufficient. The decisive factor is whether a substantiated ground for opposition under Art. 8 EUTMR can be credibly presented.

It may also be relevant whether the mark is subject to a use requirement. If the mark has already been registered for more than 5 years at the time of the opposition, the opposing party (particularly at Step 5) can require proof of genuine use. Prepare appropriate evidence (invoices, advertising materials, turnover figures, photographs etc.).

Not sure whether you can file an opposition? -> Schedule a free initial consultation now

Step 2: Filing the opposition online at the EUIPO

The opposition is filed at the EUIPO electronically via the official portal. In particular, the contested application, the older right, the grounds for opposition asserted and the goods or services concerned must be specified. The EUIPO provides its own opposition form for this purpose.

Required information:

  • Details of the contested trade mark application (application number, owner). Use eSearch plus (in the EUIPO portal) to find the contested trade mark application. Note the application number (EUTM number) and the publication date.
  • Details of the older mark (registration number, country of protection, owner)
  • Grounds for opposition (e.g. Art. 8 para. 1 lit. b EUTMR)
  • Goods and services against which the opposition is directed
  • Contact details / representative information

Note: You can file the opposition initially without a complete statement of grounds in order to meet the deadline. The detailed statement of grounds can be submitted subsequently in a later phase (upon request by the EUIPO).

Step 3: Payment of the fee

After completing the form you will be directed to payment. The fee must be received within the relevant period. If payment is missing, the opposition is deemed not to have been filed.

Step 4: Cooling-off phase – the phase for tactical and commercial solutions

After valid submission of the opposition, the EUIPO notifies the applicant of the contested mark. A cooling-off phase then begins, in which both parties are invited to reach an amicable settlement. It serves not merely for procedural organisation, but is often the decisive strategic section of the entire opposition proceedings. In this phase, both parties are given the opportunity to resolve the conflict without an adversarial decision. The initial duration is two months; at joint request it may be extended to a total of up to 24 months.

The parties may negotiate a coexistence agreement, limitation of the list of goods and services, partial or complete withdrawal of the application, or other commercial solutions. Often the conflict can be resolved this way more quickly, cost-effectively and predictably than in an adversarial decision before the EUIPO.

The cooling-off phase is therefore in many cases not only a preliminary stage of the adversarial proceedings, but the practically most important opportunity to enforce trade mark rights effectively and commercially sensibly. If no agreement is reached, the proceedings subsequently enter the adversarial phase. Many oppositions are already settled here.

Step 5: No agreement? – adversarial proceedings

If no agreement is reached, the adversarial phase begins:

The opposing party must substantiate and justify the opposition and, where necessary, prove the existence, validity and scope of protection of the older rights. A blanket assertion of likelihood of confusion is not sufficient. The EUIPO expects a structured analysis: sign comparison, goods/services comparison, assessment of the overall impression. If admissible proof of use is required, genuine use must also be demonstrated.

The applicant is then given an opportunity to respond. The EUIPO then decides in writing.

Can the decision be challenged?

Yes. Against decisions of the EUIPO, an appeal can be filed with the EUIPO Board of Appeal. The appeal must be filed within two months of notification of the decision; the fee must be paid within this period.

The statement of grounds of appeal must be submitted separately within four months. An appeal fee of € 720 is currently payable for trade mark appeals at the EUIPO.

Against decisions of the Board of Appeal, an action before the General Court of the European Union (GC) and in final instance before the Court of Justice of the European Union (CJEU) is possible.

You want to file an opposition and need legal advice? -> Schedule a free initial consultation with us

What to do if an opposition has been filed against your mark?

Anyone who is themselves the recipient of an opposition should not prematurely regard the matter as lost. Depending on the circumstances, various defence strategies come into consideration. These include in particular the review of the asserted older rights, contesting sign or goods/services similarity, requesting proof of use, and negotiations on a limitation of the list or an amicable solution in the cooling-off phase. Especially with older marks that have been registered for more than five years, the proof of use can be decisive for the outcome of the proceedings.

An opposition has been filed against your trade mark registration? -> Schedule a free initial consultation

What is decisive in EUIPO opposition proceedings

The opposition proceedings at the EUIPO are one of the most important instruments for effectively enforcing older trade mark rights. Three points are above all decisive: you must identify conflicting applications in good time, observe the three-month period from publication, and build up the opposition in terms of content carefully. Those who enter the proceedings well-prepared significantly increase their chances of successfully defending or enforcing their own rights.