Trademark Oppositions in OHIM – European Community Trademarks

Oppositions in Community Trademark registration procedure

 

A trademark is any sign that can be represented graphically and capable of distinguishing goods or services.

After filing the trademark application, there is an examination step in which the examiners from the Patent and Trademark Office checks the proposed description of goods and/or services associated with the given mark and decides whether it can be registered or not.

1.                  Trademark opposition filing deadlines

In case that the examiner considers that the trademark is distinctive for certain goods or services of a trader and that it is not deceptive,  he gives the approval for publication of the mark in the Official Gazette of the Patent and Trademark Office.

The term for opposition in case of International Registration is of three months beginning after six months following first publication by OHIM and ending after nine months from the same publication.

Given the short time for filing an opposition, most owners of major or valuable trademarks subscribe to the Official Gazette (which contains a list of trademarks published for opposition or have services that monitor the Official Gazette for publication of potentially conflicting trademarks.

2.                  Trademark opposition parties

It is important to note that, at this stage, the official examiner is no longer involved with the application.

The opposition to the grant of a trademark application may be filed by the owner of previously registered trademark or of a well-known trademark or by any other owner of previously registered intellectual property rights: trademarks, company names, domain names, author’s rights, etc.

The opposition must be filed in writing and accompanied by payment of the official opposition fee. If the fee is not paid, the opposition is not taken into consideration by the Office.

The opponent has to prove that there are valid grounds as to why the trademark applicant is not entitled under law to register or to continue holding the mark.

3.                  Trademark opposition grounds

The grounds of opposition must contain a statement showing how the petitioner would be damaged by the registration of the pending trademark, as well as a statement of the grounds for opposition.

An opposition can be filed based on relative grounds.

The relative grounds state that a trademark is confusingly similar to an existing registered trademark or that it conflicts with an existing prior common law rights established. An opposition based on relative grounds can only be filed by an owner of any prior relative rights.

4.                  Defense to a trademark opposition  (answer to an opposition; counter-statement)

The owner of a pending application is given a „notice of opposition” (a copy of the opponent’s claims) and has a period of two months in which he may submit an answer to an opposition filed before the Patent and Trademark Office. If he does not submit a counter-statement, his trademark application is dismissed.

The defense usually consists of a number of simple denials of the notice of opposition.

At this state, there is no need to submit any evidence in support of the defense of the opposition.

There is no official fee to be paid for filing the counter-statement.

5.                  Examination and decision in a trademark opposition file

It is a common procedure that the parties (the trademark applicant and the opponent) come to a settlement agreement regarding use of the trademark (usually, this means a limitation of the number of classes for the pending trademark or adding an element of distinctiveness).

If the opposition is, by any reasons, not settled amicably between the two parties, the opponent must then file evidence in support of the opposition and the applicant must submit his own evidence in support of the grant of the application.

If it is the case, the opponent must also provide proof of use for his previously registered trademark, over five years before the date of advertisement of the opposed application.

Based on the papers filed by each party, or, in some cases, also based on an oral hearing, the Patent and Trademark Office comes up with a decision regarding the grant of the pending trademark.

6.                  Appeals to a trademarks opposition decision

An opposition decision can be appealed within two months from notification of the contested decision before the Boards of Appeal of OHIM.
A higher appeal can be made to the European Court of First Instance (CFI) in Luxembourg, within two months from the notification of the negative appellate decision.
Further action is possible to the European Court of Justice (ECJ). The language of the action before the CFI in Luxembourg is subject to a different regime than the opposition and appeal proceedings before OHIM, i.e., the language of the proceedings may change.

If you are facing oppositions in Community Trademark registration procedure in OHIM – European Community Trademarks, please contact us at office@trademark-oppositions.com, we are agents authorized before OHIM.