Opposition Against a Trademark
Protect your trademark before a similar mark becomes established
If a mark is registered that is confusingly similar to your earlier mark, you can file an opposition. Opposition proceedings are faster and less expensive than court proceedings, but they are subject to short deadlines. We file the opposition for you – and defend your mark if someone opposes it.
What is a trademark opposition?
An opposition is a proceeding before the trademark office. The proprietor of an earlier mark asserts that a later mark is liable to be confused with its own mark. If the opposition succeeds, the later mark is cancelled, or refused registration, either in its entirety or for individual goods and services.
Deadlines and official fees
| Office | Deadline | Official fee |
|---|---|---|
| DPMA (German trademark) | 3 months from publication of the registration | EUR 250 for one opposing mark, plus EUR 50 for each additional mark |
| EUIPO (EU trademark) | 3 months from publication of the application | EUR 320 |
These deadlines cannot be extended. If you miss them, a later mark can be challenged by way of invalidity proceedings or the more burdensome route of court proceedings.
Filing an opposition within the deadline
To become aware of conflicting applications at all, we recommend ongoing trademark watching, as the offices do not notify you of later identical or similar marks. Where we identify a conflict, we assess the prospects of success and file the opposition together with its statement of grounds.
Defending against an opposition to your mark
If an opposition has been filed against your mark, we review the available lines of defence:
- Is there in fact a likelihood of confusion?
- Is the opposing mark being put to genuine use? If it has been registered for more than five years, we can require proof of use.
- Would a restriction of your list of goods and services resolve the conflict?
Settlement rather than dispute
Many opposition proceedings end in a delimitation agreement in which both sides set out how they will use their marks. There is a “cooling-off” period for exactly this purpose, giving the parties time to negotiate.
The cost of opposition proceedings
In addition to the official fee, legal fees are incurred. In opposition proceedings each side generally bears its own costs; at the EUIPO, the losing party may be ordered to reimburse fixed amounts. We tell you the costs to expect in advance.
Related topics: Trademark law | EU trademark | Trademark searches | Cost of a trademark application
Arrange a consultation
Is the opposition period already running? Contact us early, so that there is enough time for the assessment and the statement of grounds.
FAQs
Depending on the office and the course of the proceedings, usually several months up to more than a year.
Yes – by way of invalidity proceedings before the office or by court action. That route is more burdensome and more expensive.
Not necessarily at the DPMA. The prospects of success do, however, depend heavily on the legal reasoning.
The later mark is cancelled in whole or in part, or is refused registration.
Our Services
- Legal advice regarding warnings, both for the sender and the recipient
- Enforcement of your trademark in contentious proceedings
- Defense of your trademark rights
- Conducting trademark infringement proceedings
- Representation before all ordinary courts
- Individual advice on your trademark strategy
- Examination of the registrability of your desired trademark
- Drafting a list of goods and services
- Preparation and registration of your trademark
- Trademark monitoring
- Care and management of your trademark
- Deadline monitoring