Guide to Registration of European Community Tradeamrks (6) - Opposition to a Community Mark

Once registered, the community trademark has effect in the 27 countries of the European Community and later in the new Member States.

The opposition proceeding allows, in a single procedure, to prevent a community application from being registered (the applicant can convert his community application into national filings in the countries where no right was opposed).

The time limit

The opposition can be filed within a period of 3 months following the publication of the community trademark application in the Community Trademarks Bulletin.

The opposable rights

The notice of opposition can be based on an application or a registration of a community or national or international mark having effect in one or several states of the European Community, or on any other earlier rights (as a company name) within the European Community that are not just applicable to particular localities and that can be opposed according to the national law of the state where it has effect.

It is possible to oppose several marks and/or other rights for a single opposition proceeding, providing that these rights are owned by a single titular. It is impossible to oppose rights owned by a third person nor even by a subsidiary company.

The proceeding

Within 3 months following the community trademark application publication, the notice of opposition has to be filed, containing the following essential elements :
- the community application identification,
- the opponent identification,
- the earlier rights identification,
- the grounds upon which the opposition is based (it is sufficient to select the boxes listed in the form, it will be possible to elaborate on these arguments within a period fixed by the OHIM).

The notice of opposition has to be filed in one of the 2 languages chosen by the applicant and indicated upon publication of the community application.

However, it is allowed to file it in another official language of the OHIM (English, French, German, Italian and Spanish) and to produce a translation within a period of one month from the expiry of the deadline for filing opposition (this time limit is not notified by the OHIM).

Following the notification of opposition to the applicant starts the "cooling-off" period. Within an extendable two-month period, the opponent and the applicant may try to reach an agreement without the OHIM's intervention.

If both parties reach an agreement that puts an end to opposition, neither party will be ordered to pay costs. The opposition fee can also be refund in case of total or partial withdrawal of the community application.

When no agreement is reached, the contradictory proceeding begins.

During the opposition proceeding, the applicant may request use evidences to the opponent, provided that the opposed mark has been registered for more than five years. If a real and genuine use cannot be prooven, the opposition will be rejected or will only continue in relation to the goods and services for which proof has been furnished.

The proceeding costs apportionment is determined by the OHIM.

The decision of the opposition division may be appealed before one board of appeal of the OHIM.