When filing a trade mark application, many don’t want to think about what can happen if things go wrong and an opposition is filed. However, it is essential that you are aware of the process and are therefore in the know as to how an opposition will proceed.
With the EU opposition process, the key difference from the UK opposition period is the filing of the opposition arguments. In the EU, the first step is to file the Notice of Opposition. This details both sides details and the basis of the opposition but not the actual arguments and substantial detail of the opposition. This comes later.
Once the Notice of Opposition is filed and the opposition period comes to an end, the EU Intellectual Property Office (EUIPO) confirms the opposition’s admissibility. With this, the Office are not confirming that the opposition will be successful but it will check that the marks listed as the basis of the opposition are valid and that all the admin requirements have been complied with.
Cooling off period
Another addition that doesn’t exist within the UK process, the cooling off period is a two month period designed to encourage the parties to resolve the dispute without the need to proceed with the opposition. This period can be extended if both parties consent, which can be helpful if both parties are on course to come to a compromise. There isn’t a requirement to engage during the period but it is recommended to ensure you are doing your best to avoid an opposition if its not necessary.
Submission of arguments
If the cooling off period has not resolved the matter, the adversarial proceedings begin. The opposer will be granted a two month period to submit their statement of grounds and the applicant the same time period to respond. The opposer will be granted the opportunity to submit evidence in response to the defence if necessary.
Once the arguments are submitted, the EUIPO will make their decision. This decision will be issued in full to both parties and both parties have the opportunity to appeal this if they have been adversely affected. The decision will also include a fee award by the EUIPO to the winning party which must be paid by the losing party. This is fixed on a scale and will depend on a number of factors.
If you have received a challenge against your application or you wish to challenge another’s application, get in touch with the Lawdit team today who will take the matter off your hands!