3-3-2 The opposition procedure 2

Filing of an opposition

Oppositions against European Union trade mark applications may be using the appropriate form (Notice of Opposition) within three months or within one month for oppositions against international registrations designating the EU).

The applicant is immediately of the opposition notice filed and receives a the documents on file.

Admissibility check

EUIPO checks if the Notice of Opposition meets set out in the Regulations. In other words, the Office whether it is acceptable.

The ‘cooling-off’ period

If the notice of opposition is accepted, EUIPO sends both parties setting time limits for the proceedings. The proceedings start with a period during which parties can – the so-called ‘cooling-off’ period. During this period the parties are given the option of . The cooling-off period expires two months after the notification of admissibility. It can be for 22 months and can last for a total of 24 months. Either party can opt out of the extension at any time. Once the cooling-off period has , the adversarial part of the proceedings begins.

The adversarial part of the proceedings

At this point, the parties involved are invited to send to support their positions. The Office first gives the opponent two months to . The opponent may include any facts, arguments and evidence that they consider necessary to .

Then the Office gives the applicant two months to . Finally, the opponent is given the opportunity to submitted by the applicant. Generally speaking, these are the three stages of the process. However, EUIPO may agree to or request further ’rounds’, .

The applicant has basically two possible ways to defend their application. The applicant can question whether the earlier mark(s) have been used by filing a request for and it can file observations and evidence to convince the Office that the should fail. The opponent is then given an opportunity to comment on the applicant’s observations.

End of the proceedings

The adversarial part of the proceedings comes to an end when EUIPO informs the parties that no more observations will . This means that the file is ready for the Opposition Division to take a decision on the opposition.
When the Office there are various possible outcomes:

The EUTM application does not conflict with the earlier right(s); the opponent then pays costs to the other party (typically €300) and the application

The EUTM application conflicts ; the application then fails and the EUTM applicant pays the opposition costs to the other party (typically €650)

The EUTM application with the earlier right(s); the goods or services in conflict are then removed from the list and the application proceeds to registration (costs are generally between the two parties)

The proceedings may also end at any time if the withdraws their EUTM application or the withdraws their opposition.

All opposition decisions are online and all adversely affected parties to appeal.