Trademark oppositions

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. If it does not settle there, 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 is the cooling-off period?

A negotiation window that opens automatically once EUIPO admits the opposition, before either side files any argument. It runs two months and both parties together can extend it to twenty-four months. Either party can end it unilaterally, and the adversarial phase then begins.

Most oppositions end here, and that is the point of it. The usual settlement is the applicant limiting their goods and services to remove the overlap, which gets them a registration and gets you the space you were protecting, without either side paying for an evidence round.

The tactical reading is that cooling-off costs you nothing and costs the applicant their launch timetable. An applicant who has already printed packaging is negotiating against a clock; you are not.

Watch the deadline at the end of it. When cooling-off expires without a settlement, the opponent's evidence period starts running immediately and the opposition is decided on what you file in it.

The opposition deadline itself

Three months from publication at EUIPO, two at UKIPO, extendable to three if you file a notice of threatened opposition. Neither office extends the deadline for any other reason. Trademark watch exists because nothing else tells you the window has opened.

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