Opposition against a trademark application

Trademark infringement

If a competitor uses a trademark that is too similar to your trademark and is also used for similar products or services, this may cause confusion among (potential) customers. This is something you want to avoid. Normally, in this situation, you go to court. If the court rules that you trademark is being infringed, it prohibits your competitor from continuing to use the trademark. Such procedures can take a long time in some cases and are often expensive.

If you realise in time that your competitor has applied for a competing trademark, you can file an opposition to the trademark application with the intellectual property office where the trademark was applied for. This office will then rule on your opposition in a relatively simple procedure. In the case of a Benelux trademark, it is the BOIP (Benelux Intellectual Property Office) and in the case of a European trademark, it is the EUIPO (European Union Intellectual Property Office).

The opposition term

Following the application, a new trademark application is always first reviewed on absolute grounds. For example, it is examined whether the trademark is sufficiently distinctive and whether it is not contrary to public policy or to accepted principles of morality. If the trademark meets the relevant requirements, then the applied for trademark is published for opposition.

The opposition period lasts two months for a Benelux trademark, and three months for a Union trademark. During this period, earlier trademark owners can file an opposition against the trademark application. If no opposition is filed within the opposition period then a trademark is permanently registered.

Request for opposition

You start opposition proceedings by filing a request for opposition with the office where the trademark was applied for. This can be done entirely online at both the BOIP and the EUIPO. In the request for opposition, you can indicate on the basis of which trademark you are filing the opposition and on which grounds your opposition is based.

Cooling-off period

If you filed an opposition in time, a so-called cooling-off period will commence first. During this two-month period, the parties will be given the opportunity to reach a solution on their own. If that does not result in a solution then the opposition proceedings will be continued by the agency.

Opposition grounds

After the expiry of the cooling-off period, you will be given the opportunity to submit your grounds for opposition. This allows you substantiate in detail why the trademark applied for by your competitor conflicts with your earlier trademark. You may have the opportunity to substantiate your opposition with supporting documents. The trademark applicant will then also be given the opportunity to respond to your opposition.

Decision

The proceedings end with a decision from the office where the opposition was filed. If the office declares your opposition well-founded, the trademark applied for will be declared invalid. You can also request the office to have the other party bear the litigation costs. If the decision is in your favour, you will be able to recover a part of your litigation costs (only a fixed amount).

Benefits of Wieringa Lawyers

Our intellectual property lawyers specialise in trademark law and regularly advise and litigate on trademarks. They also regularly conduct opposition proceedings for clients. If you wish to file an opposition against a trademark application, or face an opposition against your own trademark application, we will be happy to assist you.