Opposition Guidelines at Trademark.eu
When you want to oppose a mark...
Having a trademark is not like lying back in the armchair. It is your interest to protect your mark, because neither any of the national trademark offices nor the OHIM will do it for you. Therefore, when you have one or more trademarks you have to pay close attention to the effective management of this portfolio. It might sound strange but if you have a trademark that does not mean that the trademark office would not proceed with the registration of similar or even identical marks. The reason for this is that the OHIM does not make any examination in this regard. Therefore it is your task to find out whether someone files for the registration of similar marks, and if this CTM application is dangerous to your prior rights. We listen in a client\'s conversation with an attorney of TRADEMARK.EU.
Client: How can I know if someone wants to get similar marks registered?
Attorney: One of your tasks as a CTM owner is the monitoring of the later applications whether any of those is similar to your earlier trademark.
How can I monitor the later applications?
Monitoring is not easy and usually requires professional expertise. To conduct a monitoring you can use the so-called Trademark Watching service where you can check if someone tries to get registered marks that are similar to yours. You may also check the OHIM database or trademark bulletin. TRADEMARK.EU is ready to organize you the watching.
What should I do if I find out that someone filed for a similar mark?
The first thing you should do in such situation is to think about what you would like to achieve. Why your mark is important to you? Do you use your mark in all the classes you designed in your application? What are the most important goods and services where you want to use your mark?
These are some of the questions you should think about because it is very important to build up an effective and successful strategy to protect your mark. It is also suggested to contact professionals, the trademark attorneys of TRADEMARK.EU.
When you find that an application filed after the priority date of your trademark might be dangerous to your mark and so your business, you can file an opposition against this later application. The time limit for filing an opposition is three-months from the date of publication of the application. Where a period is expressed in months, the time limit shall expire in the relevant subsequent month and on the day which has the same number as the day on which the said event occurred. That is, for example if an application gets published on May 1 you may file opposition against such application till August 1. Where the relevant subsequent month has no day with the same number or where the day on which the event occurred was the last day of the month, the period in question shall expire on the last day of that month. A period of two months fixed in a notification on 31 July thus expires on 30 September. Similarly, a period of two months fixed in a notification on 30 June shall end on 31 August. See OHIM guidelines as the most authentic source for such matters.
Do I need professional representation to file an opposition?
If you reside outside the EU, you must have professional representative to the procedures before the OHIM. If you are a European resident, you don\'t have to have professional representation to file an opposition, however, it is strongly recommended by the OHIM.
Does TRADEMARK.EU accepts authorizations for representation in opposition proceedings?
Yes. At TRADEMARK.EU we specialized in CTM matters, and so in opposition proceedings. We represent our clients with the highest level of professionalism.
How can you help your client to succeed with the opposition?
Well, we are with the client from the very first moment and we stand by him until the proceeding is over, and of course, if he wishes even after that. This means that we prepare the necessary documents and submissions, take care of keeping the deadlines, and most importantly try to reach the economically most favorable outcome for the client. Sometimes negotiation is enough; sometimes we must go forward and file an opposition. Whatever the strategy is, we stand with all of our efforts by our clients.
How long does an opposition proceeding last?
The average length of an opposition proceeding is six month.
How can I file an opposition?
Again, since drafting a successful opposition is not easy and needs professional experience, we recommend you to hire professionals who would do this job for you. Oppositions should be filed on the standard opposition form in any official language of the European Union, however, the substantive part of the opposition (e.g. the argumentations) can be submitted only in the language of the opposed application, that is one of the working languages of the OHIM, e.g. English, Spanish, German. Worth noting that in most of the cases the opponents file their oppositions in English. We at TRADEMARK.EU work only with English oppositions.
What should be in the opposition?
In the opposition it is important to identify the core facts such as the grounds for the opposition, the details of the earlier right, etc. At the very early stage of the proceeding it is not necessary to submit the detailed reasoning and the translations of the evidences yet. However, we can speed up the procedure if we submit a full opposition.
Is there any fee I should pay when I file an opposition?
Yes. The official fee for filing an opposition is 350 EUR. Our basic service fee is very favorable, it is only 295 EUR. After having filed the opposition we often must file detailed argumentation or reply to the counter part. We charge for them 180 EUR/hour professional attorney\'s fee. Note, that due care has to be exercised towards the proper payment of the opposition fee. The official fee must be received by the OHIM within the opposition period. If for some reason the opponent can\'t keep the deadline he may excuse any delay if he can prove that the payment was effected within the last ten days of the opposition period. In this case he must pay a surcharge within one month in the amount of ten percent of the 350 EUR. Note, in OHIM proceedings the receipt of the money is the decisive date.
What happens when the OHIM receives my opposition?
Once the OHIM receives your notice of opposition it gets forwarded to the representative of the applicant. The OHIM checks your opposition against the formal requirements. Of the result of this examination it sends out a notification to you. This OHIM notification sets up the deadlines for the proceedings.
What happens then?
Then begins the actual opposition proceeding. It starts with the so-called cooling-off period.
What is the cooling-off period?
During the cooling-off period, we have the opportunity to negotiate an agreement with the other party. It is typical that the parties manage to reach settlement during this cooling-off period. If we can make such agreement, each party must bear only the cost of his own representation. In most of the cases during the negotiations we manage to get the applicant to restrict the goods and services covered in the opposed application. If he restricts the classes covered in the application and as a result of which you withdraw your opposition, the official fee of the opposition will be refunded to you. However, negotiating and drafting this agreement also requires professional expertise. We TRADEMARK.EU have considerable experience in drafting such agreements. For example, one thing you have to pay attention to is that any restriction of the goods and services must be clear and unconditional. Conditions such as "if it is necessary for the protection" or "if the examiner finds it necessary" will not suffice. If against one application more oppositions are submitted, and the application gets rejected based on the first opposition, fifty percent of the official fees for the later oppositions shall be refunded to the opponents.
What happens if we cannot reach an agreement within the cooling-off period?
Then begins the adversarial part of the proceeding. We have two month to submit our arguments and observations. Once we submit our arguments and observations they will be forwarded to the applicant. Then the applicant has another two months to prepare and submit his response to the opposition. Should the OHIM deem it necessary he may request additional arguments from he parties.
Can I or the applicant request the suspension of the opposition proceeding?
Yes, suspension of the proceeding is also possible. A suspension can be decided by the OHIM acting on its own initiative, or at the request of both or one of the parties. If the suspension is requested by both parties, even when no reason is given, the OHIM will suspend the proceedings. In this case the parties may freely determine the length of the suspension however, if the requested length is beyond reasonable length they must submit proper justification for such an abnormally long period. If the parties do not indicate the period, the OHIM suspends the proceedings for two months. One of the most common instances when one of the parties file for suspensions is when the trademark registration on which the opposition is based is subject to administrative or judicial proceedings that may affect either the registration or the opponent\'s entitlement to it. When the opposition is based on earlier national application the party requesting the suspension must prove that the application faces problems. The OHIM will make his decisions only after the proper evaluation of all the relevant circumstances.
What if I haven\'t used the mark? Do I have to prove the use of my mark?
Yes. When your trademark is older than five years, the applicant may request you to prove the use. In this case the use must be proved, and we have two months to provide adequate evidence of the use. However it is sufficient if we manage to prove the use in one country.
Is it possible to claim reimbursement of my costs from the other party?
Yes. The OHIM when it makes the decision on the opposition also makes decision on the justified costs. When you, the opponent is the winning party of the opposition you may claim your costs. However, the maximum amount that can be reimbursed is EUR 650. If the applicant is winning party, he can be reimbursed for his cost but such reimbursement may not exceed the amount of EUR 300.
What do we have to prove to succeed with my opposition?
In general, we prove the similarity of the two marks and the similarity of the goods and services concerned.
How do you prove the similarity of the goods and services concerned?
The goods and services covered by a trademark are of crucial importance since any trademark enjoys protection only in relation with the goods and services designated in the registration. When the examiner compares the goods and services he focuses on the relevant public. That is because the particular features of the goods may have an important impact on the degree of attentionof the customer. For example, in case of expensive purchases (e.g. cars), one might argue that the degree of attention is usually higher than where the buying behavior is casual (e.g. candies). However, as a counterargument we would argue that even in case of candies consumers look for special brands that they like.
When we prove that the goods and services are similar, we focus on three factors: the nature and purpose of the product, the method of use, and the channels of distribution. And of course, all these three factors have to be examined in relation with the relevant public.
This examination cannot be a routine like checking only the classes expressly designated in the application. For example, in case if twin classes, like the classes 18 and 25 - both can cover materials that are used for clothing purposes either as clothing items or accessories - overlap may occur. We always check these twin classes and also the goods and services that are close or may be considered as being close to our client\'s goods and services.
How do you prove the similarity of the two marks?
You have to keep in mind that the signs must be compared in the form they enjoy protection. This comparison should focus on the overall impression of the mark, since an average consumer normally perceives a mark as a whole focusing on the distinctive and dominant components and does not proceed to the analysis of the details. The overall impression of the mark is based on the visual, aural and conceptual features of the marks so for the assessment of the similarities these features have to be taken into account.
When we represent our clients we examine all these three aspects. Sometimes however, it is not necessary to prove the similarity in all the three aspects. For example, when the goods and services involved are recommended or ordered orally, we argue that the mere aural similarity suffices to establish similarity and so likelihood of confusion.
Interesting issue can be, if for example the mark contains foreign word, and the relevant public is in general unfamiliar with the foreign language of the given word. In this case, we would argue that the consumers would pronounce the word in accordance with the phonetic rules of their language, therefore when a significant part of the relevant public pronounces the foreign word correctly, but another significant part of the relevant public applies the rules of their mother tongue, both ways of pronunciation have to be taken into account when assessing the phonetic similarity of the signs.
In case of verbal marks we argue that the first part is generally the one that primarily catches the consumer\'s attention. However, we never forget about the structure and the sequence of syllables since these are also very important factors. Beside the similarity in the first part of the word the overall impression is very important therefore although the words might have different beginning, we could still argue that the marks are similar.
You may ask how to argue when the mark contains both word and figurative elements. In case of such marks we can argue that the consumer usually focuses rather on the word component than on the figurative part of the mark. That is because when consumers talk about marks they usually refer to the word element, and rarely to the figurative parts. However, on the contrary, the similarity of the figurative component of the marks might be insufficient to establish similarity in cases where at least one of the signs contains a further word component which is not common in the marks in question.
The assessment of the similarity of the marks requires the highest level of expertise and professionalism. Therefore it is strongly advised to hire always a qualified and experienced attorney who can assist you through the protection of your mark. Attorneys of Georg Pintz & Partners at TRADEMARK.EU always stand at your disposal.
Finally how can I contact TRADEMARK.EU if I need your help?
You don\'t have to anything special, just proceed to our online service site where you can fill out our easy to use form and send us your opposition. Payment is also easy, you can choose between paying with bank card or via bank transfer.