Trademark opposition lawyer – File an opposition against a filed EU trademark or a registered German trademark

Anyone who asserts a relative ground for refusal can use an opposition to prevent a trademark registration or to obtain the cancellation of a newly registered German trademark with the help of a trademark registration lawyer. As a trademark opposition lawyer, I know that the most important of such ground for refusal is the existence of a likelihood of confusion with an earlier trademark (Art. 8 II EUTMR or 42 II No. 1 MarkenG) or an earlier national company sign (Art. 8 III EUTMR or § 42 II No. 4 MarkenG). If an opposition is successful carried out with the help of a trademark opposition lawyer, the trademark will be canceled for the goods and services for which the relative ground for refusal exists.

Even after the expiry of the opposition period, a trademark can be deleted from the register with the help of a trademark cancellation lawyer. And I as your trademark opposition attorney will help you through all the legal proceedings until we obtain your right in relation of your trademark.

As your trademark opposition lawyer, it is essential to me to clarify the importance of correct proceedings during litigations. That is why I want to give you a detailed overview about the registration and opposition of trademarks in light of the EUIPO.

Opposition period

A trademark lawyer will inform you over the time limit for filing an opposition which is three months and, in the case of an EU trademark, begins with the publication of the application (Art. 46 I EUTMR).

Costs of the trademark opposition

The opposition fee before the EUIPO is EUR 320.00.

Formal requirements for opposition proceedings before the EUIPO

The formal requirements of the Delegated Regulation (EU) 2018/625 must be observed when conducting opposition proceedings. The formal requirements for the opposition period are described in Art. 2 of Delegated Regulation (EU) 2018/625. As your trademark opposition lawyer, I know that mistakes are often made here with the objection of use (see below).

Procedure of the opposition proceedings before the EUIPO and ‘cooling-off’ period

After receiving the opposition through a trademark opposition lawyer, the EUIPO forwards it to the applicant (‘other party’). If the EUIPO considers the opposition to be admissible, it notifies this decision to the applicant. The two-month ‘cooling-off’ period begins upon notification with the possibility to extend the cooling-off period to a total of 24 months. During the cooling-off period, the parties and their respective trademark opposition attorneys should reach an agreement, e.g. by the applicant limiting the list of goods and services and the opponent then withdrawing the opposition. If the opposition is withdrawn before the start of the contradictory part of the opposition proceedings, the EUIPO will refund the opposition fee (EUR 320.00). As your trademark opposition lawyer, I ensure the laws of the proceedings and guide you through all of them.

Justification of the opposition after expiry of the cooling-off period

After expiry of the cooling-off period, the opponent must substantiate his opposition. In particular, with the help of a trademark opposition attorney he must prove that the earlier right on which he is basing his opposition exists and is in force. He must also prove that he is authorized to file the opposition. For example, if the opponent is a legal entity, it must submit extracts from a commercial register. If the opponent is a trademark licensee, he must submit the licence agreement or the extract from the trademark register in which he is registered as a licensee (e.g. pursuant to Section 30 VI of the German Trademark Act (MarkenG).

Objection of non-use

The applicant of the contested EU trademark can raise a non-use objection. In this case, the party relying on an earlier trademark whose grace period for use has expired must prove that its trademark has been used in a way that preserves its rights. The objection of non-use before the EUIPO must be raised in the form set out in Art. 10 (1) of Delegated Regulation (EU) 2018/625. Otherwise, it is inadmissible and will not be considered by the EUIPO.

If you found yourself in a situation as described above, then I advise you to look for a trademark opposition attorney who can help you draw up the necessary paperwork.

Right of appeal

An appeal against an opposition decision of the EUIPO is admissible. This is decided by a Board of Appeal of the EUIPO. The decision of the Board of Appeal may in turn be appealed before the General Court of the European Union (EGC).

The opposition procedure before the German Patent and Trademark Office DPMA against the registration of a German trademark differs from that before the EUIPO in some respects. As your future trademark opposition lawyer, I give you a detailed overview about the progress.

Opposition period

The time limit for filing an opposition against a German trademark is three months and only begins with the publication of the registration.

Costs of the opposition

The opposition fee before the German Patent and Trademark Office DPMA is EUR 250.00 and is increased by EUR 50.00 for each additional right on which the opposition is based. In proceedings before the DPMA, each party usually bears its own costs.

Objection of non-use

A non-use defense is also admissible in opposition proceedings before the DPMA, but without a strict formal requirement comparable to the proceedings before the EUIPO.

Appeal

An appeal is also admissible against an opposition decision by the DPMA. This is decided by the Federal Patent Court (BPatG). An appeal on points of law to the Federal Supreme Court (BGH) is possible against decisions of the Federal Patent Court if the BPatG has authorized the appeal on points of law.

And with this overview, you have all the necessary boundary conditions for the opposition of trademark registrations. And should you ever be in need for a trademark attorney within Germany, contact me at any given time. I will guide you through the complex legal code and will assert your right in front of the EUIPO as well as the DPMA.