FAQ ‐ Opposition against an EU designation of an IR

Since 2004 it has been possible to designate the EuropeanUnion (EU) in an International (WIPO “Madrid Protocol”) Registration (IR) under WIPO code “EM”. In that such a designation covers 28 countries and 500+ million consumers, this is a quite popular to get trademark protection in Europe. However, about 25% of all EU designations are met with an opposition, and special rules apply.

When is the opposition period against an IR?

The opposition period is between the 1st and 4th month after the date of receipt of the IR by EUIPO, the EUTM authority. If an opposition is lodged too early, EUIPO will not process it until the 6th month.


Is it possible to extend the opposition period?

No. Nor is there any possibility of "postponing" the opposition period. It is possible, though, within the opposition period, to lodge relatively rudimentary Notice of Opposition on a “barebones” basis. This can be substantiated at a later stage, by filing argumentation, documentation, etc.


Can the opposition be in a foreign language?

Yes. There are five official languages at EUIPO. Every EUTM and every EU designation has two languages, and it is possible to lodge an opposition in either language. Thus If the one language is English and the other is Spanish, then it is allowed to lodge the opposition in Spanish, even though the applicant is from an English speaking country or would otherwise prefer to defend the opposition in English.


Is it necessary to have a representative from the EU to defend such an opposition?

Yes, if the applicant does not have a domicile in the EU there is a requirement that they be represented by counsel domiciled in the EU. This could be an in‐house counsel of a European subsidiary.


What is the opposition procedure?

Upon receipt of an Notice of Opposition, EUIPO, the EUTM authority, will forward this to the attorney of record at WIPO. If there is no EU representative, EUIPO will state that one must be appointed by a certain date, usually within 2 months, or else EUIPO will send the Notice directly to the applicant and inform them an EU representative must be appointed. Thereafter EUIPO will then check the Notice of Opposition for formalities, and if EUIPO is satisfied that at least one basis is well‐founded, EUIPO notifies the parties that the "cooling‐off" period has commenced. This two (2) month period, extendible once at the joint request of both parties for 22 months, is designed for the parties to explore whether the matter may be settled somehow. If extended, either party can unilaterally "opt out". In the event one basis is well‐founded but there are deficiencies in relation to other bases, the Opponent will have to remedy these at the latest two (2) months after the cooling‐off period.


What happens if the matter is not settled within 22 months?

After the "cooling‐off" period has ended, the matter can be suspended at the joint request of both parties.


What if the matter cannot be settled (further opposition procedure)?

Two (2) months after the end of the "coolingoff" period, the Opponent can substantiate the opposition with further arguments, evidence, etc. Two (2) months thereafter (or longer, in the event the Opponent has indeed filed further arguments, evidence, etc.) the Applicant must file a response. Extensions of this responding term for cause are common. Two (2) months after receipt of Applicant's response, the Opponent may file a rebuttal, followed by Applicant's final observations. Thereafter a decision is made.


Can the goods/services at which the opposition is directed be expanded after the end of the opposition period?

No. An opposition can be directed at all or part of the goods/services covered by the application, but it is not permitted to expand the goods/services at which the opposition is directed at a later date.


If the opposition is only directed at specific goods/services, and the applicant deletes those items, is the opposition over?

Yes, it is deemed not to have commenced. Thus it is important to note at which goods/services the opposition is directed.


Can the applicant demand proof of use of the opponent’s rights?

Yes, if the opponent’s rights had been registered more than five (5) years prior to the date of publication of the EUTM application. This demand must be sent prior to or together with the Applicant’s first response.


Does the losing party have to pay the winner’s costs?

The losing party to an opposition proceeding is liable to pay the costs of the successful party, subject to certain ceilings. For attorneys fees, the relevant ceiling is 300 euro in the event no Hearing nor expert testimony is involved (both very rare). If the applicant is unsuccessful, the opposition fee (350 euro) must also be reimbursed. Thus in most cases the opponent risks having to reimburse 300 euro while the unsuccessful applicant risks being liable to pay 650 euro. The same rules apply on appeal with higher fees.


What happens if the applicant does not respond to the Notice of Opposition?

EUIPO will render a decision on the merits, which means that the applicant could win or lose, and be awarded/be liable for an award of costs, see above.


Is it possible to appeal an opposition decision?

There is an appeal as a matter of right to the EUIPO Boards of Appeal, thereafter to the General Court and from there is an appeal as a matter of right to the Court of Justice of the European Union.


More information

Link: EUIPO official opposition guidelines.

For more information contact your regular NJORD attorney or Peter Gustav Olson (pgo@njordlaw.com).

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