The EU trademark opposition system is designed to protect the rights and interests of prior trademark owners and other legal rights holders. When a third party believes that a trademark application infringes its rights, it may file an opposition with the European Union Intellectual Property Office (EUIPO) within 3 months from the date of announcement to prevent the registration of the trademark.

1. Overview of the EU Trademark Opposition Procedure

1 Acceptance Agency The acceptance agency for the EU Trademark Opposition Procedure is the European Union Intellectual Property Office (EUIPO).

2 Application Qualification The objector is the prior trademark owner or other commercial logo right holder, and the objection must be based on at least one of the objector's prior rights (such as EU trademarks, member state trademarks, Madrid designated EU trademarks, etc.).

3 Objection reasons

① Prior registered similar trademarks: In the trademark registration process, trademarks that are similar or more obviously different from registered or applied and announced trademarks in terms of shape, pronunciation, meaning, etc. This similarity may cause consumers to confuse or misunderstand the source of goods or services. Similar trademarks may involve similarity of words, similarity of graphics, and similarity of the whole, etc.

② Trademarks with reputation: If a trademark has a significant reputation in a certain region of the EU or its member states, even if it is not registered, it can be used to counter new trademark applications that may lead to unfair advantages or damage reputation. ③ Geographical indications: Geographical indications or names of origin can serve as prior rights to protect the geographical origin of specific goods and prevent confusion or damage that may be caused by new trademark applications. ④ Trade names and other commercial identifiers: Such as company names, business names or domain names, if they are already established and have a certain degree of popularity in a certain region of the EU or its member states, they can also serve as prior rights. ⑤ Copyright and other intellectual property rights: In some cases, if the graphic elements of the trademark are protected by copyright or are related to protected industrial designs or patent rights, these rights can also be cited in opposition procedures. ⑥ The trademark is descriptive, generic or lacks distinctiveness: Some trademarks are too common or too descriptive to distinguish the source of goods or services. For example, "mobile phone" is a generic name for all mobile phone products. Generic names are not distinctive because they directly describe the category of goods or services and cannot distinguish the goods or services of a specific brand. ⑦Other legal protection: Other intellectual property rights that may be protected by national or EU laws, such as plant variety rights, integrated circuit design rights, etc., may also be used as prior rights in certain circumstances.

4 Application time

For EU trademarks, opposition requests should be filed within 3 months from the date of the trademark announcement. The deadline cannot be extended.

5 Application method

EU trademark opposition applications must be filed in writing to EUIPO, and can be selected from electronic applications or paper document applications. If you choose to submit an electronic form on the official website, the opposition request will be deemed to be received if the form is successfully submitted; if you submit by mail, the opposition request will be deemed to be received when it is entered into the IT system.

6 Application language

The opposition application must be in one of the five official EU languages (English, French, German, Italian and Spanish), and must be the same as one of the two languages specified in the opposed trademark application, otherwise a translation must be submitted.

7 Opposition application fee The EU trademark opposition request fee is 320 euros, and the fee must be paid in full within the opposition period.

8 Cost-bearing The general rule is that the losing party or the party that terminates the procedure (withdraws the EU trademark application or withdraws the opposition) will bear the costs incurred by the other party due to the opposition procedure. If both parties lose the case, under normal circumstances, each party will bear its own costs.

2. Specific process of EU trademark opposition procedure

1 After the objector submits the opposition application to EUIPO at the preliminary stage of opposition, EUIPO will review whether the opposition application meets the acceptance requirements. After the review meets the acceptance requirements, EUIPO will notify both parties.

2 Cooling-off period for opposition: 2 months after EUIPO notifies both parties. If both parties make a request before the expiration of the period, it can be extended for 22 months, so the cooling-off period can be up to 24 months. Function: Encourage both parties to reconcile. If an agreement is reached, the procedure can be terminated and the fee can be refunded.

3 Confrontation period and evidence submission The objector must supplement the evidence within 2 months after the end of the cooling-off period, and the person being opposed must reply within 2 months. Key point: If the cited trademark has been registered for more than 5 years, the person being opposed can ask the objector to provide proof of use.

4 Ruling and Appeal EUIPO makes a ruling after review. The losing party can appeal within 2 months and finally go to the EU Court.

III. FAQ

1 What materials are required for opposition application? Opposition application, cited trademark information, opposition reasons and preliminary evidence (such as trademark registration certificate, proof of use, etc.).

2 If the opposition fails, can I reapply for the trademark? Yes, but the trademark design needs to be modified or the goods/service category needs to be specified to avoid conflict with the cited trademark.

3 Can the trademark be used during the opposition period? The trademark has not been successfully registered during the opposition period. It is recommended to use it with caution to avoid infringement risks.

4 How to prove that the cited trademark is not actually used? Market research, sales data, advertising records, etc. can be used to prove that the cited trademark is not actually used in the EU market.

IV. Response strategy

1 Prevention stage · Early search: Before registration, check the risk of similar trademarks through EUIPO query reports (if you don’t know how to check the trademark yourself, you can contact "Zhuo Xi", we have professional colleagues to help you check the risks). · Keep evidence: Trademark use records, sales data, etc. can be used as core materials for defense.

2Objection handling stage·Quick response: After receiving the notification, you can immediately contact the "Zhuoxi Intellectual Property" team to handle it for you to avoid overdue. ·Make good use of the cooling-off period: reach a trademark coexistence agreement through negotiation to reduce litigation costs.

3 Subsequent processing of losing the case consider converting the EU trademark application to a separate registration of a member state to recover some rights and interests.

Conclusion The EU trademark objection system is not only a strict protection of intellectual property rights, but also a compliance test for enterprises. Enterprises need to be familiar with the rules, plan in advance, and seek support from professional service teams when necessary, so that they can be invincible in global competition.

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