EU trademark oppositions 

Thank you for downloading the book!  Oppositions can be intimidating and stressful for entrepreneurs and SMEs. Often this is because of a lack of understanding of what the process means, how it will unfold, and what the possible legal consequences and costs are. The goal of this book to help you understand the process and what it means to you.  The good news is that although your trademark has been opposed, the statistics are overwhelmingly in favour of your trademark still being registered. You also have a lot of influence on how things unfold. With good decisions, you may still get your trademark registered entirely. Of course, we cannot promise that your trademark will be registered because we do not know the individual circumstances of your case.  Finally, please note that this book does not contain legal advice, only information about the opposition proceedings. We have tried to ensure that all information is up to date and accurate as of writing (January 2021), but things may have changed since. If you want us to assess your case, you can contact us through by email (email@ipriq.com) or through www.reggster.com/oppositions.    Best regards, 

  Erkki Holmila European Trademark Attorney Co-founder, Ipriq Intellectual Property Law     

   

TABLE OF CONTENTS   PART 1 - BASICS AND FUNDAMENTALS. . . 1 Quick intro Statistics support your case How does the process unfold? How long will the process take? How are oppositions typically settled? How much will the opposition cost? What if you lose? Do you have to stop using the mark?  PART 2 - SUBSTANCE - WILL YOU WIN? . . 6 Quick intro Similarity of trademarks Similarity of goods and services Likelihood of confusion Proof of use  PART 3 - TIPS AND TRICKS . . . . . 12         Please note We have made some generalisations and simplifications to make the book more readable and understandable. We are not liable for any actions, omissions or results you may take based on the information in this book. We recommend that you get legal advice for your case.   

   

PART 1 BASICS AND FUNDAMENTALS   Quick intro  After the EUIPO has examined the application and determined that it is distinctive and registrable, other parties have three months to submit an opposition against the registration of the applied trademark.   Oppositions are typically based on prior registered trademarks. They can be prior EU trademarks or national trademarks in EU member states. If somebody opposes your trademark application, there are three options: you can withdraw your application, you can settle the opposition with the opponent, or the EUIPO decides whether the trademark can be registered or not. If the opposition is successful, your trademark is refused.   Statistics support your case  The EUIPO does not examine prior registrations and considers them obstacles to registration unless the owner of the prior trademark opposes your application. Statistically, oppositions are not very common. Only about 15% of trademark applications are opposed.   Having your trademark application opposed does not necessarily mean that it will be rejected. In fact, approximately 70% of oppositions do not lead to a decision by the EUIPO. The majority of oppositions are settled by the parties.  In 2019, the EUIPO issued 6872 opposition decisions. These were divided as follows: 

1

 - Opposition rejected (=trademark registered): 2208 

(approximately 32%) - Opposition accepted (=trademark refused): 2043 

(approximately 30%) - Opposition decision split (=trademark partly registered): 

2545 (approximately 37%)  Most oppositions are settled, and only about 10% of filed oppositions lead to a complete victory for the opponent. That means that your statistical chances of getting the registration in its entirety despite an opposition has been filed is still approximately 80%, and the chances of getting the registration at least partially are as high as 90%.   Of course, these are only statistics, but it is important not to let you conclude that there is no chance of getting the registration because somebody has opposed your mark. The overwhelming probability is still on your side. Also, a lot depends on how you respond to the opposition.   How does the process unfold?  The next step in the opposition period is called "cooling-off". This is a mandatory two month period, during which the parties can settle the case. It is possible to settle the case at a later stage as well. If the case is settled during the cooling-off stage, neither party will be liable to costs and the opponent will get a refund of the EUIPO's opposition fee. There is therefore an incentive to settle the case during the opposition period.  As said, the opposition period is initially two months, but it can be extended at the request of the parties to give them more time to conclude a settlement agreement. The extension is automatically for 22 months, and it must be requested jointly by both parties.   

2

If the settlement negotiations do not go favourably, each party can at any time "opt-out" of the extended cooling-off period. This will effectively mean that the cooling-off period ends, and the "adversarial part" of the opposition begins.  In its most basic form, the adversarial part goes as follows: 

- The opponent submits their arguments and evidence - You submit a response to that - The opponent submits their final arguments - The EUIPO gives its decision 

 If the opponent's trademark registration is more than five years old, you can demand the opponent to submit evidence that the trademark has been used. If it has not been used, it will not have legal effect against you in the opposition (see below for more detail).   How long will the process take?  From the start of the adversarial part, the opposition process takes approximately one year. First, the opponent has two months to submit their arguments and evidence. You have two months to reply (from the date you are notified of the opponent's brief), and then the opponent has again two months to reply to your observations. After that, the EUIPO takes approximately 2-4 months to decide the case.  The "default" process takes approximately one year, but each party has a right to request a two month extension to its submission. In most cases, the process is approximately 1-1,5 years. If proof of use is requested, the process typically takes 1,5-2 years.   How are oppositions typically settled?  As said, approximately 70% of oppositions are settled. The parties have a right to define the terms of the settlement as 

3

they wish. A common way of settling an opposition is that the applicant (you) makes some limitations to the list of goods and services. It is also common for the opponent to request a written undertaking that you agree not to use the trademark for some goods or services.  Here's an invented example. Let's assume that you have a mobile banking app. Your trademark might cover mobile application software (class 9) and banking services (class 36). The opponent's trademark covers software in class 9. A typical solution would be that you limit your software in class 9 to relate only to banking services, for example "mobile application software for banking". The opponent might also request that you agree to limit the use of your mark only to banking software and banking services.  The above is just an example. It is up to the parties to find a way to settle.  Your chances of getting a satisfactory settlement are increased if you have any prior rights (trademarks or company name registrations) that could be used to cancel any of the opponent's rights. You don't have to limit this inquiry to cancelling the trademark is used against you. If the opponent has any trademarks that you can attack, this is valuable in settlement negotiations. For example, it might be that the opposition is based on a prior EU trademark, but you have even earlier national trademarks in any of the EU countries. If that's the case, you could leverage that trademark in negotiations, because it could possibly be used to cancel the opponent's EU trademark.   In our experience, the threat of cancellation of the opponent's mark is highly effective in getting to a satisfactory settlement.      

4

How much will the opposition cost?  If you use attorneys, the cost is typically between 2000 and 5000 EUR. However, this can vary quite a lot depending on the case.  In addition to attorney fees, the losing party may be ordered to cover 300 EUR of the winning party's legal costs, and also pay the EUIPO fee of 320 EUR. If you handle the opposition without an attorney, the maximum cost for you is 620 EUR even if you lose.   If you want the other party to pay for your legal costs (up to 300 EUR) in case of winning the opposition, you have to claim it separately. You will not get it automatically.   What if you lose? Do you have to stop using the mark?  If you lose the opposition, your trademark application will be refused either in its entirety or partially. It is relatively common that the opposition decision is a split. The opponent wins for some parts and loses for other parts.  It is also important to realise that losing the opposition does not necessarily mean that you cannot use your trademark or that its use infringes on the opponent's trademark. That is a separate question, one that can only be determined by national courts. The EUIPO only determines whether your trademark gets a Europe-wide registration. Only national courts can order you to stop the use of the mark.   In our experience in many cases the opponent does not even try to prevent the use of the mark it has opposed. There are many good reasons for this.     

5

   

PART 2 SUBSTANCE - WILL YOU WIN?   Quick intro  If you do not reach a settlement, the EUIPO will decide the opposition. A trademark is not registered if there is a "likelihood of confusion" between the trademarks. This essentially means that the trademarks and their products or services are so similar that consumers may mistakenly confuse the two or they might think that they originate from the same company.  When assessing whether there is a likelihood of confusion, the EUIPO will assess the similarity of the trademarks in question and the similarity of the goods and services in question. It is required that there is at least some similarity in each. If the trademarks are not similar, the opposition will not succeed. Also, if the goods and services are not similar, the opposition will not succeed. The opponent must show that the marks are similar and that the goods and services are similar. Otherwise, they will not win.   Similarity of trademarks  The similarity of trademarks will be assessed from three different points of view: phonetically, visually, and conceptually.  Trademarks are phonetically similar when they sound the same. For example, the English words "HOUR" and "OUR" sound identical. Also, "2" and "TWO" sound identical. Trademarks "MASSI" and "MESSI" are phonetically similar, one 

6

different vowel in the middle of the marks does not make them sufficiently different.  Trademarks are visually similar when they look the same. Even word trademarks are assessed visually. For example, marks GUGGI and CUCCI look similar. They are of equal length and have similar looking letters at similar locations.  Trademarks are conceptually similar when they mean similar things. For example, BIG and LARGE would be considered conceptually similar or even identical.  If two trademarks share a common element, it’s an indication that they are similar. If that common element is descriptive (e.g. ECO, PLUS, MINI, etc), it’s a factor that reduces similarity.  In most cases, beginnings of the marks are more important than endings. So if the beginnings of two marks are similar, it’s also an indication that the marks will be considered similar overall.  Another rule of thumb for assessing the similarity of marks is that the shorter the marks are, the smaller the difference that is required that they are considered dissimilar. If the trademarks are only 2-4 characters long, relatively small differences might be enough.  Example of trademarks that were considered similar: 

- KAMIK / KIMIKA - FEMARA / ZIMARA - TRONIC / ABTRONIC - TAIGA / TIGHA 

 Examples of trademarks that were considered dissimilar: 

- CAPOL / ARCOL - MAICO / EICO - EURON / CURON - CHUFI / CHUFAFIT 

 

7

   Similarity of goods and services  Similarity of the goods and services depends on many factors, such as 

- Nature of goods (milk and cheese are both dairy products) 

- Intended purpose (juice and milk are both for drinking) - Method of use (both books and newspapers are 

consumed by reading) - Complementarity (cigarettes cannot be smoked without 

lighters or matches) - Competition (wallpaper and paint are used to decorate 

walls) - Distribution channels (flower shops typically also sell 

congratulation cards) - Relevant public (golf clubs and golf magazines are 

directed at golfers) - The usual origin of the goods (leather belts and leather 

handbags)  The similarity assessment is an overall assessment. Strong indicators of similarity are nature of goods, intended purpose, complementarity, competition and the usual origin.  Examples of goods and services that were considered similar: 

- Cosmetics / Pharmaceutical products - Communication software / Communication equipment - Clothing / Leather goods, handbags, wallets, purses - Non-alcoholic beverages / Spirits 

 Examples of goods and services that were considered dissimilar: 

- Laundry preparations / Perfumes - Briefcases / Clothing - Flour / Biscuits, cakes - Wine / Rum 

8

   Likelihood of confusion  In most cases, there will be likelihood of confusion if the trademarks and goods and services have been found similar. Conversely, if the EUIPO determines that the trademarks are not similar, there is no likelihood of confusion. Also, if they determine that the products and services are not similar, there is no likelihood of confusion.   When assessing whether there is likelihood of confusion, the degree of similarity of the marks and the goods and services will be taken into account. Both for trademarks and goods and services, the EUIPO assesses whether the similarity is low, average or high. If the similarity is high, the probability that there is likelihood of confusion is also high.  In addition to the degree of similarity, the EUIPO will also consider the distinctiveness of the earlier mark. If the mark has very low distinctiveness (e.g. is descriptive), it is given less protection and there is more room for arguing against likelihood of confusion. Also, if the goods and services are very specialised and the target group is very attentive, there is also more room for argument against likelihood of confusion. For example, luxury products and other expensive products (like cars) typically have more attentive buyers who can more easily notice differences in the marks. If the products or services are directed for professional buyers, they are also more attentive. The reverse is true for inexpensive everyday products. Those are often bought without paying too much attention to them, so also there is more risk for likelihood of confusion to happen.   In our experience, lay persons (non-lawyers) often assess the likelihood of confusion incorrectly. They often see the marks and the goods and services having more differences than they 

9

have in the legal assessment. The EUIPO often sees the marks and the goods and services similar where you do not.   Proof of use  If the opponent's trademark has been registered for longer than five years (counting back from the application date of your trademark), it is subject to "use requirement". If the opponent's trademark has not been used for five years, it will not have any effect in the proceedings.  Here’s an example.  

Your trademark’s application date 23 October 2020  Opponent’s trademark’s registration date 15 September 2016 → No proof of use required 6 July 2015 → Proof of use required 

 The opponent does not automatically have to prove the use of its trademark. You must make a request to the EUIPO that the opponent furnishes proof of use of its trademark. If you do not make the request, the opponent's trademark will be taken into consideration in the proceedings.  If requested, the opponent must show that they have used  

- The trademark in the same manner it is registered - In the significant part of the European Union - For the goods and services covered by the registration - During the last 5 year period 

 If the opponent has used their trademark for only some of the goods and services covered by the registration, then their registration will be taken into account only to that extent. So if the registration covers t-shirts and hats, and the opponent manages to prove use for only t-shirts, then their registration will be considered only to cover t-shirts and not hats. The 

10

registration remains valid, but it will not have effect in the opposition proceedings.  Even if you make preliminary searches and determine that the opponent's trademark is used, you should always request proof of use if the registration is more than 5 years old.   The rules for evidence are very strict, and it is possible that the opponent does not manage to satisfy the use requirement even if their trademark has been used. An example of this was when McDonald's failed to establish the use of its trademark BIG MAC in 2019. So it's always worth the shot to make the opponent establish the use of their mark if the registration is more than five years old.   

11

   

PART 3 TIPS AND TRICKS  Here are some practical tips and things to consider.  

1. Do you have any prior rights (trademarks or company name registrations) that could be used to cancel any of the opponent's rights? You don't have to limit this inquiry to cancelling the trademark that is used against you. If the opponent has any trademarks that you can attack, this is valuable in settlement negotiations.  

2. Is the opponent's trademark registration more than 5 years old? Do they have other trademarks that are more than 5 years old? If the opponent's trademark is more than five years old, request a proof of use even if you can determine yourself that the mark is in use.  

3. Do you have any prior rights outside of the EU? If you have better rights for example in the US, that could be used as leverage to force a settlement in the EU.  

4. Can you attack the opponent's trademark on the basis that it is not distinctive? If the opponent's trademark's distinctiveness is very low, you can try to have it invalidated. Even a credible threat of losing its trademark is often sufficient to force a settlement. In our experience companies are not willing to take any risks with their trademarks. Also, in our experience filing a cancellation action increases the likelihood of settlement even a case weak.  

5. Often there is an overlap in the lists of goods and services despite the companies operating in very different areas. There can be many reasons for this. For example, some terms lend themselves to many different 

12

purposes. For example, "software" is a broad term that can include music editing software or software for operating nuclear power plants. Obviously, there is no likelihood of real life confusion between these two types of software. Even the lists of goods and services can overlap, it doesn't mean that the case cannot be settled. If the companies are in different industries, a real life confusion is not likely and in many cases settlement is possible.   

6. The EUIPO will only evaluate the similarity of goods and services exactly how they are defined in the trademark registration and application. The fact that companies are in real life in different industries does not concern the EUIPO. It can help your settlement chances, but it will not help you in the opposition proceedings.  

 Remember that with correct steps there are still overwhelming chances that your trademark could be registered.   Opposition proceedings are very complex, and there are many detailed rules. In order to maximise your chances, we recommend that you get legal advice and have an experienced attorney handle your case.  If you want us to review or handle your case, you can contact us at email@ipriq.com.        

13