Oppositions against trademark registration in the EU: how to proceed

The trademark registration process in the EU appears to be very straightforward. You submit the application... It is published... You wait three months for the opposition period to end and you obtain the desired EU trademark registration certificate.

All of this is really wonderful, in case there are no oppositions. But what do you do when you receive an opposition? Is all lost? This article will give you advice and specific steps to follow.

What to do after receiving an opposition?

The most important thing is not to ignore it and not to waste time. First of all, you have to see what the opponents' trademark is and try to understand what might bother them. We won't go into too much detail on this step, as you first need to understand whether your opponents are open to dialogue. Therefore, after a basic analysis, you can feel free to write to your opponents or their representatives and offer to resolve the situation peacefully.

Is it worth withdrawing the application immediately after receiving the opposition?

In most cases, such a move is premature. During the dialogue with your opponents, the most unexpected solutions may arise. Opponents may accept the registration of your trademark after hearing your arguments. There have been cases where opponents have become partners or even franchisees. It is not worth rushing to conclusions.

What is important to convey to opponents in your first response?

It is extremely important to inform them of your good intentions. In reality, opponents are primarily trying to defend their intellectual property. They genuinely see a certain similarity between their trademark and the one you are applying for, and they are concerned that consumers will confuse these signs in the marketplace. That's all. Therefore, be sure to include the history of your project. When and how it was created. Who came up with the idea for the project. It is important to convince opponents that you have no malicious intent and to provide them with basic information that will help them open up to finding a compromise.

What compromises can there be with opponents? How to find them?

If contact between the parties has already been established and the dialogue is going well, it is important to go into more detail. First of all, it is necessary to analyze everything related to the opponent's activity: their website, social media, user reviews. It is important to ensure that your opponent uses the trademark in exactly the same format in which it has been registered. It is also important to check that the opponent's trademark is used on all the products and services for which trademark registration has been requested. A comparison of your list of products and services with the opponent's list of products and services is often the key to understanding each other. Within a class, there may be products from completely different economic niches. For example, in class 9, a mobile phone manufacturer can register a trademark, but at the same time, a manufacturer of diving equipment has to choose the same class 9 for trademark registration. Can they coexist with the same name in the same class 9? Of course they can. Their consumers are completely different. Confusion in the market is ruled out. In this situation, it is sufficient to limit the list of goods and services to resolve the conflict.

How can pressure be put on the opponent to influence the withdrawal of the opposition?

You have to look for weak points. For example, more than 5 years have passed since the opponent's trademark registration. If the opponent's trademark is registered for many goods and services, it makes sense to request a declaration of actual use of the trademark for the registered list of goods and services. This use must be demonstrated for the entire list of goods and for the territory of the entire EU, which comprises 27 countries. This often has a positive influence on the opponent's attitude and helps to find a compromise quickly.

How to seal the agreement with the opponent to avoid misunderstandings?

Verbal agreements must be sealed in an agreement between the parties: Coexistence Agreement. Without a signed agreement, never begin to withdraw anything, limit, or take any action related to the agreement. Any details can be noted in the Coexistence Agreement. Only after the agreement has been signed can you carry out the actions agreed upon between the parties. This guarantees compliance with the agreement established between all participating parties.

We hope you found this article useful. We would be happy to help you register your EU trademark by clicking on the following link: submit application