Eutm opposition procedure and noteworthy issues

1. What is European Union Trademark (EUTM) Opposition? 

Under European trademark law, European Union Trademark (EUTM) Opposition is an administrative procedure that allows third parties to challenge the validity of a pending trademark application. This procedure enables the proprietors of earlier registered trademarks or those who have their earlier rights to protect their rights against possible infringement by a new trademark application. Oppositions shall be filed with the European Union Intellectual Property Office (EUIPO). 

Notably, a European Union trademark (EUTM) application can be converted into applications filed in specific EU member states where the application is not opposed. 

2. The time limit for filing notice of opposition 

A notice of opposition may be filed within a period of 3 months following the publication of the EU trademark application in the EU Trademark Bulletin. This period is inextensible. 

3. Process 

Within a period of 3 months following the publication of the EU trademark application, any opponent against such application shall file a notice of opposition to the European Union Intellectual Property Office, which shall contain: 

• information about the EUTM application against which opposition is filed; 
• particulars of the opponent; 
• a statement of the extent to which the European patent is opposed; 
• grounds on which the opposition is based (check the available options in the opposition form) 

The notice of opposition must be filed in any of the official languages of the EUIPO (English, French, German, Italian and Spanish). 

If the opposition contain deficiencies that can be remedied, the European Union Intellectual Property Office will invite the opponent to remedy them within a non-extendable time limit of 2 months. If the deficiencies are not remedied or the opposition fee has not been paid in full, the opposition will be rejected as inadmissible. 

4. Cooling-off period 

Following the notice of opposition, the European Union Intellectual Property Office will allow the parties a period of 2 months, called the “cooling-off period”, during which the trademark proprietor and the opponent can negotiate an agreement in order to settle the opposition amicably without actions by the European Union Intellectual Property Office (EUIPO). This “cooling-off period” may be extended up to a total of 22 months. Any party can then bring the cooling-off period to an end at any time. 

If the parties cannot reach an agreement, the European Union Intellectual Property Office (EUIPO) will begin the opposition proceedings. 

Trademark opposition decisions may be appealed to the Boards of Appeal of the European Union Intellectual Property Office. 

5. Grounds of EUTM opposition 

Grounds of EUTM opposition include: 

• if the opposed application is identical with the earlier trademark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trademark is protected; 
• if because of the similarity of the trademark applied for to the earlier trademark and the of the goods or services covered by the trademarks, there exists a likelihood of confusion for consumers about the origin of goods or services 
• the proprietor of the trademark may file an opposition where an agent or representative of the proprietor applies for registration thereof without the proprietor’s consent; 
• a party may oppose an EUTM application if such party can demonstrate that it has the rights protected by EU legislation to file such opposition. Such rights are varying pursuant to EU legislation or local laws  
• the opposed mark is identical with or similar to a well-known mark; 
• any person authorized to exercise the rights arising from an EU geographical indication may oppose the registration of a later EU trademark application of which the mark is identical with or similar to such geographical indication. 

6. Conversion of the EUTM application into national applications 

If the opposition is successful, it does not mean that the applicant of the opposed application will lose the rights to such mark. Instead, the opposed applicant has the right to convert his/her EUTM application into national applications in EU member states. However, the conversion is applicable solely in member states where the opposition does not apply. Similarly, an international trademark application filed on Madrid System may be converted into national applications in EU member states. 

7. Frequently asked questions about EUTM opposition 

• How to file an opposition to an EUTM application? 

An opposition to a EUTM registration can be filed in writing directly with the European Union Intellectual Property Office or via electronic filing. 

• Can an opposition decision be appealed? 

The opposition decision is open to appeal to the Boards of Appeal of the European Union Intellectual Property Office within two months from the date of notification of the contested decision. A further appeal of a Boards of Appeal decision can be made to the General Court of the European Union and then to the Court of Justice of the European Union. 

•    How long does it take for the European Union Intellectual Property Office to process an opposition? 

In normal circumstances without any hinderance, the EUTM opposition proceedings by the European Union Intellectual Property Office take 7 to 10 months. 

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