07.10.2016

Intellectual Property

FAQ – EUTM Oppositions / Cancellations 

How long is the opposition period?

For regular EUTM’s, the opposition period is three months from the date of publication in the in the European Trade Mark Bulletin. For International (“Madrid Protocol”) designations of the EU, the period is between the 1st and 4thmonth after publication.

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 “bare-bones” basis. This can be substantiated at a later stage, by filing argumentation, documentation, etc.

How much does it cost to lodge a “bare-bones” opposition?

700 euro, of which 320 euro is official fees. This amount is exclusive of any advice or negotiation.

What rights can be the basis of an opposition against a EUTM?

An opposition may be based on prior registered trademark rights, as well as – in certain circumstances – prior non-registered trademark rights and prior non-trademark rights (such as company names).

Can an opposition be based on lack of distinctiveness?

No, only on prior rights. However, a party which finds a EUTM application lacks distinctiveness can file “observations” in this regard, which may or may not be taken into consideration by the EUTM examiner. Note that a cancellation proceeding based on lack of distinctiveness can be initiated after registration of the EUTM application.

Can the bases of a EUTM opposition be expanded after the end of the opposition period?

No. Thus it is important to consider on which rights the opposition should be based prior to filing the Notice of Opposition.

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. It is also important to note that lodging an opposition against goods/services which are not confusingly similar to the goods/services comprised by the prior rights may mean that the opposition is unsuccessful against such goods/­services and that the opponent may be liable for the costs of the applicant.

What is the opposition procedure?

EUIPO, the EUTM authority, forwards the Notice of Opposition to the Applicant upon receipt, and thereafter examines the Notice for formalities. 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. If none of the bases are well-founded, the Opponent is invited to remedy these within a responding term of two (2) months (usually non-extendible).

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 “cooling-off” 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 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.

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.

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 (320 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 620 euro. The same rules apply on appeal.

What are the main differences between oppositions and cancellations?

While they are substantively quite similar in regard to prior rights, a cancellation

  • must be substantiated at the outset
  • (no “bare-bones” cancellation)
  • can include lack of distinctiveness, bad faith, etc.
  • has higher official fees (700 euro)
  • the costs recoverable for representation are 450 euro

Link:

EUIPO official opposition and cancellation guidelines:

https://euipo.europa.eu/ohimportal/en/trade-mark-guidelines

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

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