Brands are the figurehead of a company. They embody the reputation, quality and uniqueness of the products or services. But what happens if a competitor registers a similar or identical trademark? This could dilute your own brand and lead to considerable economic losses.
In such cases, opposition proceedings at the German Patent and Trade Mark Office (DPMA) or the European Intellectual Property Office (EUIPO) offer an important protection mechanism. In this article, you will learn how you can protect your trademark by filing an opposition, what time limits and costs are involved and what steps are required for a successful opposition.
What is an opposition to a trademark application?
An opposition against a trademark application is a formal legal remedy that trademark owners can use to take action against the registration of a new trademark that is similar or identical to their own trademark. When registering a trade mark, the DPMA and the EUIPO only examine the so-called absolute grounds for refusal, such as distinctiveness or the prohibition of misleading information. However, they do not check whether identical or similar trademarks already exist. This task is the responsibility of the trademark owners themselves, who must keep an eye on new registrations through continuous monitoring.
Nature and basis of the contradiction
The opposition must be filed with the respective trademark office within three months of the publication of the challenged trademark. Owners of older trademarks or other signs whose rights are impaired by the new trademark are entitled to file an opposition. This applies not only to German trademarks, but also to EU trademarks and internationally registered trademarks with protective effect in Germany or Europe.
A successful opposition can result in the challenged trademark being partially or completely canceled. This ensures that your own trademark retains its distinctive character and legal protection.
Deadlines and costs in appeal proceedings
The opposition must be filed within three months of publication of the trademark. An opposition fee of currently 120 euros must also be paid to the DPMA or 320 euros to the EUIPO within this period. If this deadline or the payment is not made, the opposition is deemed not to have been filed. However, trademark owners can also initiate nullity proceedings at any time, which are similar to opposition proceedings except for minor differences in costs.
Professional trademark monitoring is essential to keep an eye on these deadlines. Many trademark owners overlook new registrations because they do not carry out regular monitoring. Professional monitoring helps to take timely action against similar or identical trademarks and thus protect your own trademark.
Formal requirements for the objection
An opposition must be made in writing and should ideally use the form provided by the DPMA or the EUIPO's online portal. The opposition must contain the following information:
- Registration number of the challenged trademark
- Registration number or file number of the opposing mark
- Representation of the opposing mark
- Name and address of the proprietor of the opposing mark
- Name and address of the opponent (if different)
- Name and address of the proprietor of the contested trademark
- Goods and services on which the opposition is based
- Goods and services against which the opposition is directed
The opposition at the DPMA does not have to be further substantiated, but the opposition against an EU trademark at the EUIPO does.
Content requirements for a successful objection
The chances of success of an opposition depend largely on whether there is a likelihood of confusion between the trademarks. This is assessed on the basis of the following criteria:
- Similarity of the trademarks or other identifiers: This includes the phonetic, visual and conceptual similarity of the marks.
- Similarity of the goods or services: The more similar the goods or services offered, the higher the likelihood of a likelihood of confusion.
- Distinctive character of the earlier mark: Trademarks with a high degree of distinctiveness enjoy stronger protection.
An example of a likelihood of confusion would be if a company offers technical accessories under the name "Apple", which could lead to confusion with the trademark "Apple".
On our Page on warnings in trademark law you will find further information on the likelihood of confusion, which applies accordingly in opposition proceedings. The difference is that in opposition proceedings, the goods and services applied for are examined in abstract terms, whereas in contentious proceedings it is usually a question of the specific use of the sign.
Legal support and tactical considerations
Although it is not absolutely necessary to consult a lawyer for the opposition proceedings, it is strongly recommended. A specialist intellectual property lawyer can better assess the prospects of success of the opposition and take the right legal steps. This is particularly important if the opposing party argues well and the opposition could otherwise end to the detriment of the applicant.
There are also strategic considerations that should be taken into account. An opposition can also make sense for tactical reasons. If cancellation proceedings are subsequently instituted, the defendant no longer has the option of being exempted from the costs of the proceedings by means of an immediate acknowledgement pursuant to Section 93 of the German Code of Civil Procedure (ZPO) following opposition proceedings. This reduces the cost risk for the plaintiff.
Course of the appeal procedure
After the opposition has been filed, the owner of the challenged trademark can make a statement. The DPMA or EUIPO then examines whether there is a likelihood of confusion. If this is established, the challenged trademark can be partially or completely canceled.
In the event of an extensive collision or a very well-known earlier trademark, the new trademark can be completely canceled. This cancellation is retroactive, so it is as if the trademark had never been registered.
Alternatives to the contradiction
In addition to the opposition, there are other legal measures to take against a trademark infringement:
- Cancellation request: After the objection period has expired, a request for deletion can be submitted. This does not offer complete legal certainty, as an objection decision has no binding effect on subsequent cancellation proceedings.
- Warning: A warning letter can be issued in the event of clear infringements of trademark law. However, this is risky and should only be done in clear cases. We would be happy to advise you on this.
- Civil action: An action for injunctive relief or an interim injunction can be sought. However, these proceedings are lengthy and cost-intensive.
Conclusion
Opposing a trademark application is an effective way of protecting your trademark from dilution and infringement and preserving the value of your trademark. A successful opposition can be achieved by adhering to the deadlines and formal requirements and by carefully examining the substantive requirements. Professional legal advice and continuous trademark monitoring are essential in order to protect your trademark in the long term and preserve its uniqueness.
For a non-binding inquiry or further advice, please do not hesitate to contact us. Please use our contact form or contact us directly by phone or e-mail.