Your EU trade mark has been opposed. What happens next?
An opposition notice is unsettling, but it is a normal part of the system and it often ends in agreement. Here is how the procedure runs and where your options lie.
Why oppositions happen
Once your application is published, the owner of an earlier right has three months to oppose it.¹ The most common ground is that your mark is identical or similar to an earlier mark, for identical or similar goods or services, so that the public is likely to be confused.² Oppositions can also be based on earlier marks with a reputation, and on unregistered rights protected under national law.³
Step 1: Cooling-off
When the EUIPO admits the opposition, it opens a two-month cooling-off period. Nothing has to be filed. It exists so the parties can talk. If both parties ask, it can be extended up to 24 months in total, and either party can later end it.⁴
Settling at this stage avoids the cost of the full procedure. Common settlements are:
Limiting your specification. You remove the goods or services that overlap with the opponent’s.⁵
A coexistence agreement. The parties agree how each mark will be used so they do not collide in the market.
Withdrawal. Where the conflict is real and the brand is new, rebranding early can be cheaper than fighting.
Step 2: The opponent’s case
If there is no settlement, the opponent has two months to file its arguments and evidence, such as proof of the earlier right.⁶
Step 3: Your response
You then have two months to reply.⁷ This is where a key defence arises. If the earlier mark has been registered for at least five years, you can ask the opponent to prove it has genuinely used it. If it cannot, the opposition is rejected, or limited to the goods it has actually used the mark for.⁸
Step 4: The decision
The EUIPO decides on the written submissions. The application may be refused in full, refused in part, or allowed to proceed.⁹ Either party can appeal to the Boards of Appeal within two months of the decision.¹⁰
If the opposition succeeds
If the earlier right exists in only some Member States, you can ask to convert your EU application into national applications where there is no conflict, keeping your original filing date.¹¹
What to do now
Note the deadline in the EUIPO’s letter.
Check the opponent’s earlier mark: its goods, its age and whether it is being used.
Decide early whether you want to negotiate, defend or rebrand. The cooling-off period is your best window to settle.
This article is general information, not legal advice. Received an opposition? Write to hello@lunelegal.com. See also our Areas of Practice.
Sources
Ibid., Art. 8(1)(b)
Ibid., Art. 8(4)–(5)
Regulation (EU) 2017/1001, Art. 49(1)
Delegated Regulation (EU) 2018/625, Art. 7(1)
Ibid., Art. 8(2)
Regulation (EU) 2017/1001, Art. 47(2)
Ibid., Art. 47(5)
Ibid., Art. 68(1)
Ibid., Art. 139