Opposition to the EU trademark application

Regarding the opposition to an European Union trademark application, article 46)1 of the European Union Trademark Regulation n. 2017/1001 provides that:

“Within a period of three months following the publication of an EU trademark application, notice of opposition to registration of the trademark may be given on the grounds that it may be given”

Therefore, the time to file an opposition to the registration of a trademark is very short, so it is always advisable to activate actions in order to monitor your brand!

Who can file an opposition to an European Union trademark?

Subjects entitled to file the opposition are the owners of the applications or registrations or the authorized licensee of the following categories of earlier marks:

1. European Union trademarks;
2. National trademarks of a Member State of the E.U.;
3. International trademarks designating European Union;
4. International trademarks designating a Member State of the European Union;
5. Trademarks which are well known in a Member State, in the sense in which the words “well known” are used in Article 6 bis of the Paris Convention.

In addition:

• The proprietor of the trademark, where an agent or representative of the proprietor of the trademark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action;
• The proprietor of a non-registered trademark or of another sign used in the course of trade of more than mere local significance

“where and to the extent that, pursuant to Union legislation or the law of the member State governing that sign: rights to that sign were acquired prior to the date of application for registration of the EU trademark, or the date of the priority claimed for the application for registration of the EU trademark; that sign confers on its proprietor the right to prohibit the use of a subsequent trademark”

• Any person authorized under the relevant law to exercise the rights arising from a designation of origin or a geographical indication …where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications…an application for a designation of origin or a geographical indication had already been submitted…prior to the date of application for registration of the EU trademark or the date of the priority claimed for the application, subject to is subsequent registration; that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trademark

What are the grounds of opposition to an European Union trademark?

The grounds of the opposition can be (article 8 of the European Union trademark Regulation):

• The mark applied for is identical to the earlier mark and the respective products and/or services are identical;
• Because of the identity or similarity of the mark applied for with the earlier mark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected; the likelihood of confusion included the likelihood of association with the earlier trademark;
• The trademark is identical with, or similar to, an earlier trademark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similr to those for which the earlier trademark is registered, where this latter has a reputation and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark

The proceeding of opposition to an European Union trademark

After the formal examination of the notice of opposition, EUIPO grants the parties a period of time (which may be extended upon the request of both parties up to a maximum of 24 months), during which they can reach an amicable agreement (so-called “cooling off period”). During such period, each of the parties can unilaterally ask the EUIPO to resume the opposition proceedings (so-called “opting out”).
After the cooling-off period is ended (or before, in the event of opting out) the opposition proceedings begins, with the possibility to file arguments and evidences in support of the reasons of both parties.
Against the decision issued by the Opposition Division, it is possible to file an appeal to the EUIPO Boards of Appeal.

If you wish to file an opposition to an EU trademark, you can get in touch with Eva Troiani law firm, who will inform you on the proceedings. In this regard, we invite you to read “actions of opposition to a trademark”, where we describe how the firm can provide assistance and advice.