The existence of earlier rights constitutes a relative ground for refusal of the registration of a European Union trade mark. The Office does not examine of its own motion such grounds for refusal. Consequently, the EU trade mark application is published in the EU Trade Marks Bulletin and a period of 3 months is given in which to file notice of opposition to protect earlier rights that the future European Union trade mark could affect.
European Union Trade Marks Bulletin constitutes the means of informing when a European Union trade mark application has been filed, thus allowing the proprietors of earlier rights to protect such a right.
You can also create an
alert within your User Area, which can notify you of similar trade marks to yours being filed.
Notices of opposition, filed within a time limit of 3 months following the publication of the European Union trade mark application, are processed by the Opposition Division. After checking whether the fee has been paid in time, the Opposition Division will examine whether the notice of opposition fulfils the basic requirements. If it finds a deficiency that can be remedied, the opponent is requested to do so.
Once this phase has drawn to a close, the applicant for the European Union trade mark will be advised of the notice of opposition. At this point, a period of 2 months commences in which both parties can contact one another to try to come to a friendly settlement. This is known as the cooling-off period.
For more information about your rights, please consult the
looking after your rights page in the trade marks once registered section of our website.
The ‘cooling-off’ period consists of the 2 months following the notice of opposition and is prior to the commencement of the adversarial phase (in which both the opponent and the applicant participate). As the adversarial phase has not yet commenced, if both parties reach an agreement that puts an end to opposition, neither party will be ordered to pay costs.
In addition, if the agreement reached is based on restricting the list of goods and services of the EU trade mark by excluding those affected by the opposition or if it is based on the withdrawal of the EU trade mark application, the Office will refund the opposition fee to the opponent.
Oppositions against EU trade mark applications have to be filed in writing within a period of 3 months following the publication of the EU trade mark application in the
EU Trade Marks Bulletin.
For your convenience, oppositions can also be filed using the
online form. Once the online form has been submitted, an opposition number will be allocated to your request.
Opposition is considered as duly submitted only if the
opposition fee has been paid.
To file a notice of opposition a payment must be received by the Office within the time limit for filing an opposition.
Further details on
Applicants who do not have their domicile, principal place of business or real and effective commercial establishment within the EEA (
European Economic Area) are required to be represented before the Office. To access the Office’s list of representatives, please consult
The Opposition Division of the EUIPO uses the five languages of the Office (English, French, German, Italian and Spanish). The notice of opposition may only be filed in one of these languages and the language must also coincide with one of the two languages chosen by the applicant for the European Union trade mark, as indicated upon publication of the application in the EU Trade Marks Bulletin. This language will then be used throughout the opposition proceedings.
If the notice of opposition is filed in one of the languages of the Office (English, French, German, Italian and Spanish) that does not, however, coincide with the languages of the opposed EU trade mark application, the opponent is granted a time limit of 1 month in which to produce a translation into the appropriate language.
A notice of opposition may be filed within a period of 3 months following the publication of the EU trade mark application. The official publication date is the date on which the application is published in Part A1 of the European Union Trade Marks Bulletin. The notice of opposition and payment of the opposition fee must be received by the Office within this time limit.
No. The opponent must be a single natural or legal person and must base the notice of opposition on trade marks of which the opponent is the proprietor. Consequently, if an opposition to an EU trade mark application is based on several trade marks belonging to different companies (different natural or legal persons), each person will have to file a separate notice of opposition.
There can only be more than one opponent on the same notice of opposition when they are co-proprietors of the opposing trade marks.
Yes. The language of the proceedings is established when the opponent chooses one of the Office’s languages, which must also coincide with one of the two languages indicated in the EU trade mark application. All correspondence with the Office, as well as any documents upon which opponents base their rights, must be drawn up in or translated into the language of the proceedings.
The Office serves the notice of opposition once it has established that the opposition is admissible in accordance with the EU trade mark regulation (
EUTMR). This does not mean, however, that it is ‘complete’. After the expiry of the ‘cooling-off’ period and if the parties have not reached a friendly settlement, the opponent has a period of 2 months in which to complete the file by submitting the evidence upon which the opponent’s arguments and rights rely. The Office will then send the documents received to the applicant so that the applicant may submit observations within a period of 2 months.
Trade marks are subject to the obligation of being put to real and genuine use on the market within a period of 5 years following their registration in all the Member States of the European Union. Accordingly, the European Union trade mark regulation (
EUTMR) grants the applicant the opportunity to request the opponent to submit proof of the use of the trade marks upon which an opposition has been based, provided that these trade marks have been registered for more than 5 years. The request for proof of use must be ‘unconditional’ and submitted in a ‘separate document’.
Those goods or services for which proof of use has not been proved will be excluded from the opposition. In other words, opposition proceedings may only continue in relation to the trade marks and goods and services for which real and genuine use has been proved. If use is not proved for any of the goods and services for which the earlier trade mark(s) is(are) registered, the opposition will be rejected.
The evidence submitted must consist of ‘indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based’. For example, evidence may consist of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and sworn or affirmed statements.
The decision on apportionment of costs is given in a decision on substance. In all other cases where the EUIPO Opposition Division closes the case, a decision on costs is attached to the notification. Where the costs are limited to representation costs and the opposition fee, the decision fixing the amount of costs will be included in the decision on the apportionment of the costs according to the ceilings set out in Article 18 of the EU trade mark implementing regulation.
Evidence submitted must consist of ‘indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based’. For example, evidence may consist of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and sworn or affirmed statements. The evidence must be provided in a structured manner and must include an index.