European Trademark Opposition
EU trademark application can be opposed based on validly filed notice of opposition provided, all formality and substantive argumentation are fulfilled within a period of 3 months following the publication of the application.
The notice of opposition has to contain reasons and has to be supported by evidence enabling its examination. The Office shall not consider any amendments to the opposition or any evidence submitted in support of the opposition made after the expiry of the time-limit of 3 months as mentioned above.
The notice of opposition may be filed on the basis of one or more earlier rights, provided that all of them belong to the same opponent.
The opposition may be based on a part or all of the goods or services in respect of which an earlier right is protected or in respect of which is applied for and may relate to a part or all of the goods or services in respect of which an application is filed.
The opposition shall contain:
- an indication of the goods or services to which the opposition relates or indication that the opposition relates to all of the goods or services stated in the application;
- identification of the opponent’s earlier rights on which the opposition is based; and
- an indication of the goods or services on which the opposition is based or indication that the opposition is based on all of the goods or services protected by the opponent’s earlier rights.
Opposition fee must be paid within the same time limit for filing a notice of opposition. The opposition fee is 320,- EUR.
Where the opposition fee has not been paid within the opposition period, the opposition shall be deemed not to have been entered. Where the opposition fee has been paid after the expiry of the opposition period, it shall be refunded to the opposing party. Where the notice of opposition has been filed after the expiry of the opposition period, the Office shall reject the opposition as inadmissible.
The notice of opposition must be filed in a language which is one of the languages of the Office, otherwise the Office shall reject the opposition as inadmissible. Alternatively, the opposing party must submit a translation. Where the opposing party submits an incomplete translation, the part of the notice of opposition that has not been translated shall not be taken into account in the examination of admissibility.
Examination of opposition
In the examination of the opposition the Office invites the parties to file observations, within a period set by the Office. If the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered
In the absence of proof to this effect, the opposition shall be rejected.
If examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the EU trade mark application has been made, the application shall be refused in respect of those goods or services. Otherwise the opposition shall be rejected.
The Office shall give the opposing party the opportunity to submit the facts, evidence and arguments in support of the opposition or to complete any facts, evidence or arguments. For that purpose, the Office shall specify a time limit which shall be at least two months, starting on the date on which the adversarial part of the opposition proceedings is deemed to commence. The opposing party shall also file evidence of the existence, validity and scope of protection of its earlier mark or right, as well as evidence proving its entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:
|(a)||where the opposition is based on an earlier trade mark within the meaning of Article 8(2)(a) and (b) of Regulation (EU) 2017/1001, which is not an EU trade mark, evidence of its filing or registration, by submitting: (i) a copy of the relevant filing certificate or an equivalent document from the administration with which the trade mark application was filed, if the trade mark is not yet registered; or (ii) where the earlier trade mark is registered, a copy of the relevant registration certificate and, if applicable, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 or any extension thereof, or equivalent documents from the administration by which the trade mark was registered;|
|(b)||where the opposition is based on a well-known mark within the meaning of Article 8(2)(c) of Regulation (EU) 2017/1001, evidence showing that that mark is well known in the relevant territory for the goods or services indicated in accordance with Article 2(2)(g) of this Regulation;|
|(c)||where the opposition is based on the absence of the proprietor’s consent as referred to in Article 8(3) of Regulation (EU) 2017/1001, evidence of the opposing party’s proprietorship of the prior trade mark and of its relationship with the agent or representative;|
|(d)||where the opposition is based on an earlier right within the meaning of Article 8(4) of Regulation (EU) 2017/1001, evidence showing use of that right in the course of trade of more than mere local significance, as well as evidence of its acquisition, continued existence and scope of protection including, where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence;|
|(e)||where the opposition is based on an earlier designation of origin or geographical indication within the meaning of Article 8(6) of Regulation (EU) 2017/1001, evidence of its acquisition, continued existence and scope of protection including, where the earlier designation of origin or geographical indication is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence;|
|(f)||if the opposition is based on a mark with a reputation within the meaning of Article 8(5) of Regulation (EU) 2017/1001, in addition to the evidence referred to in point (a) of this paragraph, evidence showing that the mark has a reputation in the Union or in the Member State concerned for the goods or services indicated in accordance with Article 2(2)(g) of this Regulation, as well as evidence or arguments showing that use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.|
The evidence concerning the filing or registration of the earlier rights or the evidence concerning the content of the relevant national law, is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source. Any filing, registration or renewal certificates or equivalent documents, as well as any provisions of the applicable national law governing the acquisition of rights and their scope of protection, including evidence accessible online shall be in the language of the proceedings or shall be accompanied by a translation into that language.
Where, until the expiry of the opposition period, the opposing party has not provided any evidence, or where the evidence provided is manifestly irrelevant or manifestly insufficient for any of the earlier rights, the opposition shall be rejected as unfounded.
A request for proof of use of an earlier mark shall be admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office.
Bauer-IP can prepare a notice of opposition, including substantive argumentation, and represent the opponent during the proceeding. In particular, we will draft and file reasons and supported evidence(s) enabling the examination in opposition proceeding.
We will meet all formal requirements as well.
Observation by a third party is also possible.