OPPOSITION AGAINST A TRADEMARK APPLICATION
Opposition against a trademark: An opposition is a trademark procedure through which the owner of a trademark objects to a more recent trademark application because he deems this application too similar to his earlier trademark. What should you know if you want to start an opposition against a trademark application? And what if someone files an opposition against your trademark application? How to successfully handle an opposition procedure? In this article I will discuss the most important points of attention regarding opposition procedures.
Opposition against a trademark: what is it about?
The overall “impression” of the trademarks
Trademarks can be similar in various ways, for example visually, phonetically or conceptually. The opposition to a trademark application differs depending on whether it concerns word marks, figurative marks or (combined) word-image marks. In the case of word marks, the proprietor of a trademark usually objects to the phonetic similarity of the new trademark application (i.e., the trademark is read or pronounced in a similar manner). In the case of figurative marks (e.g., a logo), objections are usually made against the visual and conceptual similarity of the marks. This means that the trademarks look similar or evoke a similar meaning. In the case of word-image marks, it is often a combination of these different similarities.
In practice, the question is whether the overall impression of both trademarks is similar, considering their most distinctive and dominant features. This assessment varies greatly from case to case.
The classes and sub-classes of the trademarks
For an opposition procedure, it is important to take a decent look at the classes selected at the time of application of the trademarks. These classes serve to indicate the goods or services that will be covered by the trademark. The classes are further subdivided into sub-classes, so that the protection of the trademark can be defined as accurately as possible.
For a successful opposition proceeding, it is important to know whether the older trademark and the newer trademark application cover similar (sub)classes. For example, a word may be registered as a trademark by two parties to sell completely different goods or services (think of the word “Lotus” which is registered as a trademark for both biscuits and cars: in practice there is no risk of confusion, and these trademarks can coexist). Thus, when filing an opposition, you should always specify against which (sub)classes of the earlier trademark the proceedings are being brought.
Risk of confusion among the public
What is also important if you are considering an opposition procedure, is the question whether the similarity between the trademarks gives rise to confusion among the public. An opposition centers usually on the question whether the trademarks are so similar that there is a likelihood of confusion and/or association between the new and the old trademark. However, an opposition can also be filed if the new trademark takes unfair advantage of the earlier trademark or is detrimental to the distinctive character or the reputation of the earlier trademark. In any case, the burden of proof lies with the trademark owner who initiated the opposition proceeding.
Opposition against a trademark: how does the procedure work?
What are the concrete steps you must take when filing an opposition against a trademark application which is similar to your trademark, or when an opposition is filed against your trademark application?
Consider an amicable solution
It is advisable to first contact the applicant of the new trademark, or the trademark owner who has started opposition proceedings against your application. This can be done before you start the opposition proceedings, or during the so-called “cooling-off period” within the opposition proceedings (see below).
In order to increase your chances of success, it is best to engage the services of a trademark specialist. The aim is to reach a solution as quickly as possible which is also tailor-made for both parties. If the parties fail to reach an agreement in the trademark dispute, opposition proceedings can still be initiated (provided that the opposition term has not yet expired).
File an opposition with the trademark office
Opposition proceedings must be started with the trademark office where the trademark application was filed. This article discusses the procedures before the Benelux Office for Intellectual Property (or “BOIP”) and the Office for Intellectual Property of the European Union (or “EUIPO”). The opposition procedures for these offices follow similar rules.
In the case of a Benelux trademark, the opposition must be filed within two months after the trademark application has been published by the BOIP. In the case of a European Union trademark (“EUTM”), the opposition must be filed within three months of the publication of the trademark application by the EUIPO.
This period is also called the “opposition period” of a trademark application. If the opposition is declared admissible by the Office (BOIP or EUIPO), a so-called “cooling-off” period starts. The Office will inform the parties accordingly. This cooling-off period gives the parties the opportunity to resolve their dispute among themselves as mentioned above. We recommend that they always try to do so.
If after the cooling-off period, the parties have not found a solution to the dispute, the parties can either opt to extend the “cooling-off” period by mutual agreement or to effectively contest the opposition proceedings. In the latter case, parties are given a period of two months to exchange their arguments and documents. Once the examination of the opposition by the Office has been completed, the Office will take a decision on the trademark application as soon as possible. If the Office considers the opposition well-founded, the application will be refused (in full or in part). The last possible step is to file an appeal against the Office’s decision within two months after the date of the decision on the opposition.
If you have any questions about an opposition procedure, or if you would like us to assist you in an opposition procedure, do not hesitate to contact us.