Opposition Proceedings Against Trademark Applications Before the EUIPO and DPMA

The opposition procedure against trademark applications is a central instrument of trademark law in the European Union and Germany to protect the rights of existing trademark owners.It enables proprietors of earlier trademarks to take action against the registration of new trademarks that could infringe their earlier rights.This article provides a comprehensive overview of the opposition procedure before the European Union Intellectual Property Office (EUIPO) and the German Patent and Trade Mark Office (DPMA), including the rights from which an opposition can arise, the duration of proceedings, costs, reimbursement of costs and the success factors of an opposition.
 

Rights from which action can be taken

An opposition against a trademark application can be based on various earlier rights. The most important of these include

1. Earlier registered trademark rights:
   • EU trademarks (European Union trademarks): Trademarks that are registered with the EUIPO and enjoy protection in all EU member states.
   • National trademarks: Trademarks registered with the national trademark offices of the EU member states.
   • International trademarks: Trademarks registered under the Madrid Agreement or the Protocol to the Madrid Agreement with protective effect in the EU or certain EU Member States.
      
2. Unregistered trademark rights:
    
   • Usage marks: Trademarks that enjoy protection through actual use in the course of trade, even if they are not formally registered.
      
3. Other earlier rights:
    
   • Business names: Company identifiers and business names used in the course of trade.
   • Geographical indications and designations of origin: Names that indicate geographical origin and particular quality or characteristic of products and are protected by EU regulations.
   • Well-known trademarks: Trademarks that enjoy extended protection due to their reputation in a member state or the EU.
      

Duration of proceedings

The duration of opposition proceedings can vary depending on the complexity of the case and the workload of the respective authority. In general, the duration of proceedings can be estimated as follows:

• EUIPO: Opposition proceedings before the EUIPO usually take between 8 and 18 months. This period includes the filing of the opposition, the examination and the decision by the Opposition Division. However, delays may occur if, for example, the parties request extensions of time limits or additional evidence is submitted.
• DPMA: Opposition proceedings before the DPMA can take between 12 and 24 months. Here too, the duration depends on various factors, such as the complexity of the case and the need for further statements or evidence.

Costs

The costs of opposition proceedings are made up of various fees and expenses:

• EUIPO:
  • The opposition fee is currently EUR 320.
  • In addition to the official fees, costs for legal advice and representation may be incurred, which vary depending on the complexity of the case.
     
• DPMA:
  • The opposition fee at the DPMA is EUR 120.
  • Here, too, the costs for legal advice and representation must be taken into account, which may vary depending on the complexity of the case.

Process of the opposition procedure

Opposition deadlines

DPMA

The opposition period at the DPMA is three months from the date of publication of the trade mark registration in the Trade Mark Journal. It is crucial to monitor this deadline closely, as a late opposition is inadmissible and the trademark remains registered.

EUIPO

The time limit for filing an opposition at the EUIPO is also three months from the date of publication of the trade mark application in the "Bulletin of European Union Trade Marks".

Cool-off period in EUIPO proceedings

In opposition proceedings before the EUIPO, there is a so-called "cool-off period" of two months, which can be extended by up to 24 months at the request of both parties. The purpose of this period is to give the parties time for negotiations and a possible amicable settlement before the actual opposition proceedings begin. If an agreement is reached within the cooling-off period, the opposition fee will be refunded.

Submission of the opposition

The appeal must be submitted to the competent authority within the deadline, together with the grounds and the relevant supporting documents.

Preliminary procedure

The authority checks the formal requirements of the objection and requests further documents if necessary.

Main proceedings

Both parties, the opponent and the applicant for the new trademark, have the opportunity to submit statements and evidence. The authority evaluates the arguments and evidence of both sides.

Decision

The authority makes a decision based on the information submitted. This decision can be appealed by both parties.

Reimbursement of costs

In the event of a successful appeal, the losing party may be obliged to reimburse costs. The rules on the reimbursement of costs differ between the EUIPO and the DPMA:

• EUIPO: The EUIPO may order the unsuccessful party to reimburse the costs incurred for filing the opposition and for legal representation. However, the reimbursable costs are capped in order to avoid excessive claims.
   
• DPMA: The DPMA can also order the unsuccessful party to reimburse the costs, but the reimbursable costs are generally limited to the official fees and a reasonable proportion of the lawyer's fees. As a rule, costs are not reimbursed.

Reasons for a successful appeal

An appeal can be successful for a number of reasons. The most important grounds include:

Likelihood of confusion:

An opposition is successful if there is a likelihood of confusion between the earlier mark and the mark applied for. This is assessed on the basis of the similarity of the signs and the goods or services. The decisive factor is whether the public could believe that the goods or services come from the same company or from economically related companies.

Reputation of the earlier mark:

If the earlier mark is a well-known mark, it enjoys extended protection. In this case, an opposition may be successful even if there is no direct likelihood of confusion, but the use of the later mark takes advantage of or is detrimental to the distinctive character or repute of the mark with a reputation.

Property rights for geographical indications:

An opposition may be successful if the mark applied for infringes a geographical indication or designation of origin that is protected by EU regulations. This is particularly relevant for trademarks that indicate the origin or quality of products.

Protection of business names:

An opposition may also be successful if the trade mark applied for infringes a business name that is used in the course of trade and has achieved a certain degree of recognition.

Defense strategies for the applicant

Success factors of an opposition

The chances of success of an opposition depend largely on the quality and completeness of the documents submitted and on the arguments put forward. A well-founded opposition includes

• A detailed analysis of the similarity of the trademarks
• The presentation of the likelihood of confusion
• If necessary, evidence of the reputation of the earlier trademark

Objection of non-use

The objection of non-use is a defense strategy that the applicant for the new trademark can raise in opposition proceedings. In this case, it is disputed that the opposing trademark has actually been used. The opponent must then prove that the trademark has been put to genuine use in the relevant territory within the last five years prior to the opposition date. This proof can be provided by submitting sales figures, advertising expenditure, product packaging, labels or other evidence documenting the use of the trademark.

The objection of non-use can only be successfully raised if the challenged trademark has already been registered for at least five years at the time the new trademark is applied for. If this is not the case, the objection of non-use is not admissible and the opponent does not have to provide evidence of use.

Coexistence agreement

The parties can reach an agreement to allow the parallel use of both trademarks and withdraw the opposition. In most cases, the list of goods and services is restricted and an assurance is given that the trademark will only be used for the registered goods and services.

Conclusion

Opposition proceedings against trade mark applications before the EUIPO and the DPMA are an effective means of protecting the rights of existing trade mark owners. It enables the proprietors of older trademarks to take action against the registration of new trademarks that could infringe their rights. The chances of success of an opposition depend on various factors, including the similarity of the signs, the reputation of the earlier mark and the specific circumstances of the individual case.

The duration and costs of opposition proceedings vary, with both the EUIPO and the DPMA offering the possibility of reimbursement of costs. A successful opposition usually requires thorough preparation and sound legal argumentation, which is why it is advisable to consult an experienced trademark attorney.

Opposition proceedings not only ensure the protection of existing trademark rights, but also strengthen the integrity of the trademark system as a whole. Trademark owners should therefore regularly monitor their rights and act quickly in the event of a possible infringement in order to effectively protect their trademarks.