Received an objection to your trademark? Here's how we'll save your registration

You have the hurdles of Trademark application taken. The trademark is registered. However, instead of relief, looking at the mail brings the next conflict: a competitor has filed an objection to your trademark.

For many founders and e-commerce merchants, this comes as a shock. There's a threat of complete or partial deletion of their own brand. But panic is the wrong advisor. An objection by no means means the automatic end of your application. Often, these are purely tactical maneuvers behind it, which we can strategically defuse.

In this guide, we will show you how the opposition procedure works, how we defend your trademark, and why you don't have to fear exploding costs.

What does a trademark objection mean?

After a trademark is registered, holders of older rights have the right to challenge the new registration. The law aims to prevent identical or very similar trademarks from confusing the market.

Opposition is a swift, official procedure. It takes place directly before the German Patent and Trademark Office (DPMA) or the European Union Intellectual Property Office (EUIPO). The opponent’s goal is clear: they want to have your trademark removed from the register.

Deadlines and formalities – why every day counts now

In trademark law, the calendar rules. When you receive a letter from the Trademark Office, strict deadlines apply.

• The period for objection: The opponent must file their opposition within three months of the publication of your trademark. This deadline is a statutory period of preclusion. It cannot be extended.

• Payment deadline: Within these three months, the opposing party must also pay the official fee. Under the DPMA system, this fee is currently 250 euros for the first ground of opposition. At the EUIPO, it is 320 euros. If payment is received late, the opposition is deemed inadmissible.

First, we check if the opponent has precisely followed all formalities. Formal errors by the attacker are the quickest way to dismiss an objection outright.

The process at the trademark office: From examination to decision

The procedure takes place in clearly defined steps:

The cooling-off period

European law (EUIPO) and German law (DPMA) give the parties some breathing room. Once the notice has been served, a two-month period for reaching an amicable settlement begins. This period can be extended upon joint request. The best part is: if we reach a solution during this phase, the Office will not rule on costs. That saves money.

2. The exchange of arguments

If an amicable settlement fails, the office digs in its heels. We receive a deadline for a statement. Now the opposing party explains why they see a risk of confusion. We counter with precise arguments and dismantle the opposing party's reasoning. This exchange can drag on for several months.

3. The Decision

In the end, the trademark office decides by means of a resolution. Either the opposition is rejected and your trademark remains valid. Or the opposition is successful. Then your trademark will be cancelled entirely or for specific goods and services.

Our Defense Strategy: How We Neutralize Contradiction

We do not leave the success of your brand to chance. To successfully ward off an objection, we utilize the entire spectrum of legal defense instruments.

The absence of a risk of confusion

The main argument of most opponents is the alleged risk of confusion. We will examine this claim closely. A risk of confusion only exists if the brands are similar. and simultaneously the offered products or services are identical or similar. We will point out the differences to the office. If your target audience cannot confuse the brands, the opposition collapses.

The Plea of Non-Use – Our Sharpest Lever

Many companies hoard brands without ever using them. This is where your greatest opportunity lies. If the competitor's brand is older than five years, they must also be using it seriously in business.

In this case, we are raising the so-called defense of non-use. Now the burden of proof shifts. The opponent must prove without any gaps that they actively used their trademark in the last five years. If they cannot provide evidence with invoices, catalogs, or advertising materials, they will immediately lose the proceedings. Their trademark will be disregarded for the proceedings.

Coexistence through a demarcation agreement

Sometimes trademarks actually overlap in small areas. A lengthy process then carries risks. If the chances of success are slim in one aspect, we will tell you that openly and honestly from the beginning.

In such cases, we negotiate a professional separation agreement. We agree with the opposing party who offers which products under which name. You might restrict a niche in your directory, but in return, you secure the lasting existence of your brand. This is often the most economically sensible approach.

Who pays for the proceedings? Costs at the DPMA and EUIPO

The risk of costs varies greatly depending on where your brand is attacked:

• Proceedings before the DPMA (Germany): The legal principle here is that each party bears their own costs (§ 63(1) of the German Trademark Act - MarkenG). The Office only orders the losing party to pay costs in extreme exceptional cases, such as obvious recklessness. Thus, you are fully aware of the financial risk you are taking.

• Procedures before EUIPO (European Union): The principle here is: the loser pays. The losing party must reimburse the winning party for the official appeal fee and also pay a fixed lump sum for legal costs (usually 300 Euros). Whoever attacks here without valid grounds or defends poorly will end up paying for both sides.

Full cost transparency: Statutory fees instead of a ticking stopwatch

Many entrepreneurs are afraid of going to a lawyer. They fear incalculable fees due to a ticking stopwatch in the background. We are putting an end to this lack of transparency.

In objection proceedings, we typically bill strictly according to the statutory fees of the Lawyers' Compensation Act (RVG). We do not bill in five-minute increments. We do not require expensive hourly agreements to effectively assert your rights. You will know exactly what the fee will be from the very first minute. This gives you absolute planning certainty for your budget.

Have you received a letter regarding a trademark objection? Don't waste valuable time. Simply send us the document by email or through our contact form. We will review the deadlines and provide you with a quick, expert legal initial assessment.