When filing or defending a European Union trademark (EUTM), it is crucial to understand opposition proceedings before the EUIPO (European Union Intellectual Property Office). This mechanism allows earlier rights holders to challenge an EUTM application on various legal grounds, seeking total or partial refusal of the contested application. Below is an overview of how the opposition process works, the key deadlines, and the “cooling-off” period that can help parties negotiate an amicable solution.

1. Formal Opposition vs. Substantive Opposition

One of the first distinctions to make is between formal opposition and substantive opposition:

Formal Opposition: The opponent provides basic identification details (parties involved, the earlier right(s) invoked) within the mandatory three-month period following the trademark application’s publication. This ensures the EUIPO recognizes an intention to oppose.
Substantive Opposition: The opponent submits arguments and evidence explaining why the EUTM application infringes its earlier rights. This step typically occurs after filing a formal opposition and may involve more elaborate documentation.

Key Point: The three-month opposition window (from the date the EUTM application is published in the EU Trade Marks Bulletin) cannot be extended. Missing this deadline will forfeit the ability to challenge the application at the EUIPO level.

2. How Does an Opposition Before the EUIPO Work?

EUTM Application Publication
After the EUIPO deems an EUTM application acceptable for registration, it publishes the application in the EU Trade Marks Bulletin.
Three-Month Opposition Period
Within three months from publication, holders of earlier marks (or certain other rights) may file an opposition. This strict deadline cannot be extended, making it essential to monitor relevant EUTM filings promptly.
Possible Outcomes
- Total or Partial Refusal of the Contested Application: The EUIPO may reject the EUTM application entirely or limit its scope (e.g., goods/services removed).
- Rejection of the Opposition: If the EUIPO finds the earlier rights insufficient or the evidence unconvincing, the opposition will be dismissed.
Pre-Opposition Contact
Often, contacting the EUTM applicant for an amicable resolution (e.g., coexistence agreement, amendment of goods/services) can save costs and time. If a deal is reached, it may render the formal opposition unnecessary.

Practical Tip: Given the complexity of evidence gathering (proof of use, reputation, etc.), it is advisable to work with an IP attorney or trademark law specialist.

3. Grounds for Opposition (Article 8, EU Trademark Regulation)

Under Article 8 of Regulation (EU) 2017/1001 (EUTMR), an opponent can rely on multiple grounds:

Identical or Similar Earlier Mark
When the earlier mark is registered for identical or similar goods/services, creating a likelihood of confusion with the contested EUTM application.
Well-Known Marks
Marks that are well known in an EU Member State, as provided by Article 6bis of the Paris Convention. Although not formally registered, well-known marks can form the basis of an opposition if recognized sufficiently within the relevant territory.
International Marks Valid in an EU Member State
Earlier trademarks protected via international arrangements (e.g., the Madrid System) that designate at least one EU Member State.
Designations of Origin or Geographical Indications
If an application for a protected designation of origin (PDO) or protected geographical indication (PGI) was filed before the contested EUTM application’s filing (or priority) date—and later registered—this right can block use of a subsequent mark.
Unregistered Trademarks or Signs Used in Commerce (Beyond Local Significance)
If acquired prior to the date of the contested EUTM filing (or priority date), and the sign confers the right to prohibit later marks, an opponent can rely on these unregistered rights.
Agent/Representative Filing Without Owner’s Consent
If the EUTM application was filed by an agent or representative of a trademark owner, without that owner’s permission, the rightful owner can oppose.

Note: Relying on “unregistered” or less conventional signs can be effective if the owner proves the mark or sign is used commercially in more than a local sense, pre-dating the contested application’s filing or priority date.

4. The Cooling-Off Period: A Chance for Amicable Resolution

Shortly after the opposition is filed, the EUIPO notifies the parties and triggers the cooling-off period, which:

Initial Duration: Two months, starting from the date of official notification of the opposition.
Possible Extension: Up to 22 additional months, allowing a total of 24 months for parties to negotiate an out-of-court settlement.

During cooling-off, the parties can communicate, propose changes, or reach a mutual agreement. If successful, the opposition is closed without further litigation. However:

Opt-Out: Either party can opt out of the cooling-off period before its expiration by written notice to the EUIPO. The Office then ends cooling-off within two weeks and moves directly into the adversarial phase.
Next Steps: Once cooling-off is over, each side has fixed deadlines (generally two months for the opponent to elaborate its case, then four months for the applicant to respond) to submit arguments or proof of use.

This procedural flexibility often helps avoid lengthy, costly disputes, making cooling-off a valuable mechanism to preserve commercial relationships.

5. Dreyfus: Your Partner in EUIPO Opposition Proceedings

Dreyfus offers tailored support for every stage of the EU opposition process:

Pre-opposition analysis to assess risks and potential amicable settlements.
Formal and substantive filings (compliance with EUIPO procedures, meeting deadlines).
Proof of use and evidence collection, crucial for defending earlier marks.
Representation during cooling-off negotiations and adversarial phases.
Strategic guidance if multiple grounds or coexisting national/EU rights apply.

By combining deep trademark-law expertise and hands-on experience with EUIPO practices, our team stands ready to defend your brand effectively or challenge a conflicting EUTM application. We advise reaching out promptly once a mark is published to preserve your opposition window and maximize the chances of a favorable outcome.

Contact Dreyfus for further information and step-by-step support during EU opposition proceedings. Our IP attorneys ensure your rights are properly enforced and protected within the short, non-extendable deadlines set by the EUIPO.

Whether you plan to oppose a newly published EU trademark or need guidance on the entire process, Dreyfus is here to help you navigate these crucial steps while ensuring the best possible protection of your IP portfolio.

Need advice or assistance?Schedule an appointment with an expert

Contact

The European opposition proceeding