Oppositions & Invalidity

Oppositions

After an EU trade mark application is published, the owner of an earlier right has three months to oppose it.¹ We file oppositions for clients whose rights are threatened, and defend clients whose applications are opposed.

Every EUIPO opposition begins with a two-month cooling-off period, which the parties can jointly extend to up to 24 months.² We use it to negotiate where a settlement serves you, for example by limiting a specification or agreeing coexistence. Where the earlier mark has been registered for five years or more, we can require its owner to prove genuine use.³

In Malta, oppositions are filed within 90 days of publication,⁴ and the parties can jointly request up to 90 working days to settle.⁵

Invalidity actions

A registered EU trade mark can be declared invalid on absolute grounds, including where the applicant acted in bad faith when filing,⁶ or on relative grounds, based on an earlier right.⁷ We bring invalidity actions against marks that should not have been registered, and defend registrations under attack.

In Malta, invalidity and revocation actions can be brought before the Comptroller of Industrial Property or the Civil Court.⁸

Revocation for non-use

An EU trade mark that has not been put to genuine use for a continuous five-year period can be revoked.⁹ If an unused mark stands in your way, revocation can clear it.

Appeals

EUIPO decisions can be appealed to the Boards of Appeal within two months.¹⁰ In Malta, decisions of the Comptroller can be appealed to the Court of Appeal within fifteen days.¹¹

Sources
1. Regulation (EU) 2017/1001 (EUTMR), Art. 46(1)
2. Delegated Regulation (EU) 2018/625, Art. 6(1)
3. EUTMR, Art. 47(2)
4. Commerce Department, Latest publications
5. Trademarks Act, Cap. 597, Art. 50(2)
6. EUTMR, Art. 59(1)(b)
7. Ibid., Art. 60
8. Trademarks Act, Cap. 597, Art. 52(1)
9. EUTMR, Art. 58(1)(a)
10. Ibid., Art. 68(1)
11. Trademarks Act, Cap. 597, Art. 100(1)