Trademark oppositions

An opposition is a formal objection to somebody else's trademark application, filed during the publication period. Filing an EU opposition costs €790 in fees to us plus the EUIPO opposition fee. A UK fast-track opposition starts at €975.

The deadline is the whole thing

You have three months from publication of an EU trademark application. In the UK it is two months, extendable to three if you file a notice of threatened opposition.

These deadlines cannot be extended once missed. After that the mark registers and your only route is a cancellation action, which is slower, more expensive and harder to win.

This is the argument for a trademark watch service. Nobody tells you when a conflicting application is published. If you are not looking, you find out when the competitor is already trading.

Grounds

Earlier identical or similar mark. The most common ground. You own an earlier mark, the application is identical or confusingly similar, and the goods or services overlap enough that people would be confused.

Reputation. If your mark has a reputation in the EU, you can oppose an application even for unrelated goods, where using it would take unfair advantage of or damage that reputation.

Earlier unregistered rights. Available in some circumstances where you can evidence genuine use in trade.

Bad faith. Where the applicant filed knowing about your rights and intending to block you.

Proof of use

If your earlier mark has been registered for more than five years, the applicant can require you to prove you have actually used it. If you cannot, the opposition fails on that mark regardless of how similar the applications are.

Keep evidence of use as you go: dated invoices, catalogues, packaging, advertising, sales figures by country. Assembling it years later from nothing is difficult and it is where oppositions are lost.

What happens after filing

EUIPO checks the opposition is admissible, then opens a cooling-off period of two months, extendable to two years by agreement. Most oppositions settle here, often with the applicant limiting their goods to avoid the overlap.

If it does not settle, both sides file submissions and evidence, and the Opposition Division decides on the papers. That takes about a year from the end of cooling-off.

What it costs

Official fees are payable in addition. Later stages of an opposition carry further costs, which we quote before doing the work.

Next

• Trademark watch
• Cease and desist letters
• EU trademark registration