Received an EUIPO opposition? What should an applicant do?

You have applied to register an EU trade mark and received notice that another party has opposed it. If you have already launched the brand, the news may be unsettling. It does not mean that EUIPO has decided against you, or that the opposition will necessarily succeed.

An opposition is a request by the holder of an earlier right to refuse your application for some or all of its goods and services. Your next step is to establish what is being challenged, when you must respond, and what the dispute means for your business.

Start with the EUIPO notice and the deadlines

Read the communication carefully. EUIPO may first inform you that an opposition has been filed and later notify you that it is admissible and set the timetable for the proceedings. Check the documents in the case file, including any attachments, rather than relying on the short description in an email.

Once an opposition is found admissible, the parties normally have an initial two-month cooling-off period to explore a settlement. If they do not settle, the opponent has time to complete its evidence and arguments, followed by a period for the applicant to reply. In a standard timetable, EUIPO sets the applicant’s reply deadline six months from its notification of admissibility. Extensions or other developments can change the timetable, so record the dates stated in your own EUIPO communications.

If your business is established outside the European Economic Area, check whether you need to appoint an authorised representative for the proceedings.

Find out exactly what the opponent is claiming

The notice should identify the earlier rights relied on, the grounds for opposition and the goods or services being challenged. Start by asking:

• Does the opposition concern the entire application or only part of it?

• Which earlier trade marks or other rights does the opponent rely on, and where are they protected?

• How close are the signs when considered as a whole?

• Which goods or services overlap or may be considered similar?

• Is the opponent also claiming that its earlier mark has a reputation?

Do not decide the case by comparing class numbers alone. Goods and services in different classes can still be similar, while those in the same class are not necessarily similar. An earlier right protected in just one EU Member State can also create a problem for an EU-wide application.

The opponent must support its case. A notice of opposition tells you what it alleges; it does not establish that its arguments are correct.

Consider whether to request proof of use

If an opposition relies on an earlier registered trade mark that meets the relevant five-year threshold, you may be able to require the opponent to prove genuine use of that mark for the goods or services on which it relies. The relevant question is whether the earlier mark had been registered for long enough at the filing or priority date of your application, rather than whether it is five years old today.

This can matter where an earlier registration covers a broad list of goods and services, but the mark has been used for a narrower range. A request for proof of use has formal requirements and must be made within the first period EUIPO gives you to reply to the opposition. It is not something to leave for a later round of arguments.

Proof of use may change the scope or strength of the case, but it will not necessarily dispose of an opposition based on several earlier rights.

Choose a response that fits the business

There is no single best response to every opposition. The sensible course depends on the legal arguments and on how important the contested brand and products are to your plans.

Negotiate. The parties may be able to agree on their respective activities or on changes to the application. If continued use of the brand matters to you, make sure any agreement addresses that question clearly. Withdrawal of an EUIPO opposition alone may not settle every dispute about market use.

Limit the goods or services. If the conflict concerns only part of your application, a carefully drafted restriction may preserve protection for the parts of the business that matter most. Review future plans before doing this: goods or services removed from the application cannot simply be added back to it later.

Defend the application. If the opposition is weak or threatens a core brand, you may decide to respond with legal arguments and, where relevant, evidence. EUIPO will assess the earlier rights, the signs, the goods and services and the applicable grounds of opposition.

Reconsider the filing or the brand. Where the conflict is substantial, withdrawing the application or developing a different mark may be more economical than prolonged proceedings. That decision deserves a careful assessment, particularly if the brand is already in use.

The cooling-off period gives you an opportunity to explore an agreement before the contested exchange of submissions begins. You do not have to settle, but it is a useful time to establish what outcome your business could accept.

Does the opposition mean you must stop using the brand?

An EUIPO opposition concerns registration of the trade mark. It is not, by itself, a court ruling that your current use infringes someone else’s rights.

You should still assess use separately. If you are about to launch in the EU, invest in packaging or expand advertising, the potential cost of changing the brand may rise quickly. Conversely, a settlement that allows your application to proceed should be checked for what it actually permits you to do in the market.

The practical question is therefore broader than “Can we win the opposition?” It is also: Can we continue building this brand on terms that work for the business?

Get advice while you still have options

If you have received an EUIPO opposition, send me the application number, the EUIPO notice and any documents you have received from the opponent. Tell me briefly whether the brand is already in use and which products or services are most important to you.

I can assess the procedural timetable, the earlier rights and the commercial options, then discuss the scope and cost of a response with you. Contact Anna Miniewicz about an EUIPO opposition.