Opposing a European Union trade mark before the EUIPO
By Pablo Ludeña, lawyer. Updated on . Leer en español
To oppose an EU trade mark application you have three months from its publication (art. 46(1) of Regulation 2017/1001). The procedure includes a two-month cooling-off period, extendable to twenty-four months in total, before the adversarial part begins.
Why an earlier national mark matters
The EU trade mark is unitary, so a valid earlier right in a single Member State can block it. The owner of an earlier Spanish mark is entitled to oppose (arts. 8 and 46 EUTMR), and likelihood of confusion is assessed in the territory where the earlier mark is protected (art. 8(1)(b) EUTMR). A company should not assume that an EU filing is beyond the reach of a national right, or that its own EU filing is safe because no conflict exists in its home market.
Stages of the procedure
| Stage | Time limit | Provision |
|---|---|---|
| Notice of opposition and payment of the fee | Three months from publication | Art. 46(1) EUTMR; art. 5(1) DR 2018/625 |
| Cooling-off period | Two months from the EUIPO communication, extendable to 24 | Art. 6(1) DR 2018/625 |
| Substantiation of the opposition | Set by the Office, not less than two months | Art. 7(1) DR 2018/625 |
| Applicant’s observations | Set by the Office | Art. 8(2) DR 2018/625 |
| Appeal against the decision | Two months to file; four for the grounds | Art. 68(1) EUTMR |
If the fee is not paid within the period, the opposition is deemed not to have been filed (art. 5(1) DR 2018/625). If the opponent does not provide evidence of the existence, validity and scope of protection of its right in time, the opposition will be rejected as unfounded (art. 8(1)).
Languages and representation
The notice of opposition must be filed in one of the five languages of the Office: English, French, German, Italian or Spanish (art. 146(2) and (5) EUTMR). Nobody is generally obliged to be represented before the EUIPO, but persons with neither a domicile, nor a principal place of business, nor a real and effective establishment in the European Economic Area must be represented in all proceedings other than the filing of an application (art. 119(2) EUTMR).
The cooling-off period
During this time the parties can reach an agreement without the case moving forward. If the application is withdrawn or limited to goods or services not targeted by the opposition, or if the Office is informed of a settlement, the proceedings are closed (art. 6(2) DR 2018/625). In practice, a well-drafted limitation of the list can solve the problem for both parties.
Proof of use
At the applicant’s request, the opponent must prove genuine use of its mark during the five years preceding the filing or priority date of the application, provided that the earlier mark had been registered for at least five years at that date. Without such proof, the opposition is rejected (art. 47(2) EUTMR).
I work on fixed rates by process: each procedure has a closed fee, which you know before instructing me, with no hourly billing. Official fees, where they apply, are separate.
Frequently asked questions
How long do I have to oppose an EU trade mark?
Three months from publication of the application (art. 46(1) of Regulation 2017/1001).
What is the cooling-off period?
A two-month phase, extendable to twenty-four months in total at the request of both parties, in which they can reach an agreement before the adversarial part begins.
Can I oppose an EU trade mark on the basis of a Spanish mark?
Yes. Earlier national marks of a Member State are valid earlier rights for an opposition.
Do you have a case open in Spain?
Tell me about it and I will tell you what I see and what deadline you have. I work on fixed rates by process: each procedure has a closed fee, which you know before instructing me.
Sources
This article provides general information and is no substitute for advice on a specific case. Always check the deadline in your own file. Only the Spanish and official texts of the legislation are authoritative; English renderings of Spanish provisions are my own.