Opposition proceedings before the EUIPO and the DPMA

Anyone who asserts a relative ground for refusal can use an opposition to prevent a trade mark registration (in the case of the EU trade mark) or to obtain the cancellation of a newly registered German trade mark. The most important 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, 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 by means of cancellation proceedings under trademark law.

Opposition period

The time limit for filing an opposition is three months and, in the case of an EU trade mark, 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. Mistakes are often also made here with the objection of use (see below).

Grounds for the opposition

If the EUIPO receives an opposition and finds it admissible, it will request the opponent to substantiate the opposition.

Notice to submit comments

After receiving the statement of grounds for opposition, the EUIPO invites the applicant of the contested trade mark to submit a statement within a specified period.

Objection of non-use

The applicant of the contested EU trade mark can raise a non-use objection. In this case, the party relying on an earlier trade mark whose grace period for use has expired must prove that its trade mark 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.

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 DPMA against the registration of a German trade mark differs from that before the EUIPO in some respects. For example, an opponent does not have to substantiate his opposition. There are further differences in the forms and time limits and the costs:

Opposition period

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

Costs of the opposition

The opposition fee before the 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 defence is also admissible in opposition proceedings before the DPMA, but without a strict formal requirement comparable to the proceedings before the EUIPO.

Legal remedy

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 authorised the appeal on points of law.