Námitkové řízení u EUIPO

Basic Principles and Purpose of Opposition Proceedings

This process is not just a reactive tool for those defending themselves but also a strong preventive mechanism for those wishing to protect their rights. At the same time, it presents a risk to applicants for a new mark, which can be avoided. 

Companies owning intellectual property rights significantly outperform their competitors, with an average of 23.8% higher revenue per employee and 22.1% higher wages. For small and medium-sized enterprises, this increase is even more pronounced, reaching 44%.

This suggests that trademark protection is not merely a legal formality but rather a strategic investment that directly contributes to the financial health and competitiveness of a business. The best defense is often proactive prevention and thorough research before filing an application, a service that the law firm ARROWS can provide.

Who Can File an Opposition and Based on What Rights?

An opposition can be filed by the owner of an earlier right. This includes a wide range of rights, such as earlier registered EU trademarks (EUTM), national marks of EU member states, and international marks with protective effect in the EU. It also includes unregistered rights, i.e., marks acquiring protection through actual use in trade (so-called use marks), even if they are not formally registered.

Other earlier rights that can form the basis of an opposition include trade names, geographical indications, and designations of origin protected by EU regulation, as well as well-known marks that enjoy extended protection due to their reputation. To file an opposition based on certain rights, such as under Article 8(3) EUTMR, it is important that the applicant is exclusively the owner of the earlier trademark, not merely a licensee.

ARROWS lawyers can provide legal consultations that protect against fines and inspections and help correctly identify and assess all earlier rights on which an opposition can be based.

Overview of Risks Associated with Insufficient Brand Protection

This table illustrates the key risks faced by companies if they do not take sufficient steps to protect their brand and how ARROWS can help.

Key Reasons for Filing an Opposition:

Successful opposition proceedings depend on strong arguments and evidence demonstrating a conflict with an earlier trademark. EUIPO considers several main reasons that may lead to the rejection of a new mark application.

The most common reason for filing an opposition is the likelihood of confusion between the earlier and new mark. This likelihood is assessed based on the similarity of the marks themselves (visual, phonetic, conceptual) and the similarity of the goods or services for which the marks are intended. The decisive factor is whether the public might think that the goods or services come from the same company or economically connected companies.

Assessing similarity is not always straightforward and requires deep legal expertise. For example, even if the marks differ visually or phonetically, they may be conceptually similar if they mean the same thing in different languages.

It is also considered whether the marks form a "family of marks," sharing a common element recognizable to the public as a reference to a single owner. Even a mark with low distinctiveness can lead to confusion if the degree of similarity between the marks and goods/services is high.

ARROWS lawyers will assist with the preparation of legally required documents and legal opinions that thoroughly analyze the similarity of marks and goods/services and demonstrate the existence of a likelihood of confusion.

Reputation of Earlier Mark: Extended Protection for Well-Known Brands

If an earlier mark has a reputation or is well-known, it enjoys extended protection. This means that an opposition can be successful even if the goods or services do not match, if the use of the newer mark would unjustly benefit from the reputation of the earlier mark or harm it.

ARROWS lawyers will assist with the preparation of documentation that demonstrates the extent and reputation of your brand, which is crucial for asserting this extended protection.

An opposition can also be successful if the applied-for mark infringes a protected geographical indication or designation of origin. Similarly, trade names and business identifiers used in trade can form the basis of an opposition.

The Course of Opposition Proceedings Step by Step: What to Expect?

Opposition proceedings at EUIPO have clearly defined stages, which are important to know for effective case management. The entire process usually takes 8 to 18 months.

An opposition must be filed within 3 months of the publication of the trademark application. It is filed online and is considered filed only after the payment of a fee of 320 EUR. EUIPO then conducts an admissibility check to determine whether the opposition meets the basic requirements. 

It is important to note that if the applicant does not have a domicile or principal place of business in the European Economic Area (EEA), they must be represented by a professional representative.

ARROWS lawyers will draft internal guidelines for filing applications and preparing legally required documents to ensure that the opposition is flawless and admissible from the start. 

The international network ARROWS International ensures that they can effectively represent clients regardless of their domicile in the EEA.

After the admissibility check, the "cooling-off" phase follows, usually lasting 2 months, with the possibility of extension up to 24 months. During this period, the parties are encouraged to attempt an amicable resolution. If an agreement is reached at this stage, the opposition is terminated, and neither party has to bear costs. The opposition fee may even be refunded if the agreement is based on limiting the list of goods/services or withdrawing the application.

If no agreement is reached during the "cooling-off" period, the proceedings move to the adversarial phase. The opponent has 2 months to submit evidence and arguments supporting their position. Subsequently, the applicant has 2 months to submit their comments. Importantly, the applicant can request the opponent to prove the genuine use of the earlier mark if it has been registered for more than 5 years.

ARROWS Lawyers will assist with the preparation of documentation and legal opinions that effectively support arguments and ensure that all necessary evidence is submitted on time and in accordance with EUIPO requirements.

The Office will decide whether the earlier rights prevail and whether the application must be rejected for all or some goods and services. All opposition decisions are published online. The party adversely affected by the decision has the right to appeal to the Boards of Appeal.

ARROWS provides representation in courts and administrative bodies, including the EUIPO Boards of Appeal, to ensure that clients' rights are fully protected even in the event of an unfavorable first-instance decision.

Defense Strategies for Applicants: How to Defend Against an Opposition?

If a trademark application is challenged by an opposition, there are effective strategies to defend and increase the chances of successful brand registration.

One of the most common defense strategies is raising a non-use objection. If the earlier trademark on which the opposition is based has been registered for more than 5 years at the date of filing the application (or at the priority date), the applicant can request the opponent to prove its genuine and proper use in the relevant territory during the last five years. If the opponent fails to prove genuine use for the specified goods or services, the opposition will be dismissed for those categories for which use was not proven.

Often the most effective way to resolve a dispute is to reach a coexistence agreement with the opposing party. This agreement allows both parties to use their marks concurrently, often with restrictions on the list of goods and services for which the marks are used. The applicant may also consider limiting the list of goods and services in their EUTM application to address concerns raised in the opposition. This can be done at any time during the proceedings.

ARROWS is experienced in legal consultations and the preparation or revision of contracts, including coexistence agreements and licensing agreements, which protect clients' interests and allow business to continue. Experience from providing long-term services to clients, including more than 150 joint-stock companies and 250 limited liability companies, provides a unique insight into effective negotiation.

Potential Problems in Opposition Proceedings and How to Solve Them

This table focuses on specific procedural and strategic issues that may arise during opposition proceedings and shows how ARROWS provides solutions.

Evidence and Argumentation: What You Need for Success?

Success in opposition proceedings stands and falls with the quality and relevance of the evidence presented. Without it, even the strongest legal arguments lose weight.

Types of Evidence and Proving Genuine Use of the Mark

Evidence of use must include "data concerning the place, time, extent, and nature of use." Suitable evidence includes invoices, price lists, catalogs, packaging, labels, photographs, newspaper advertisements, and affidavits. The evidence should demonstrate genuine and proper use, not merely symbolic use. Invoices are often considered one of the most important pieces of evidence of use.

The burden of proof lies with the opponent, especially in proving genuine use. Arguments and evidence are optional when filing an opposition but become crucial in later stages of the proceedings. This shows that the proceedings are dynamic and require strategic timing of evidence submission. 

Clients need to know that gathering evidence is an ongoing process that begins long before the proceedings themselves, such as by keeping marketing materials and invoices. This emphasizes that legal assistance is not just about representation in proceedings but about long-term advice in intellectual property management, including archiving evidence of use and reputation.

ARROWS lawyers will assist with the preparation of documentation that systematically gathers and presents relevant evidence of brand use, even considering the international context, thanks to the ARROWS International network.

Proving Reputation and Distinctiveness

Proving the reputation or enhanced distinctiveness of an earlier mark is key to obtaining extended protection. Evidence may include market awareness information, evidence of confusion, advertising expenses, and examples of mark use in practice.

Opposition proceedings at EUIPO are not just legal but also a significant business matter that can have substantial financial and reputational consequences for both parties.

Fees and Cost Reimbursement

The official fee for filing an opposition is 320 EUR. The general rule is that the losing party bears the fees and costs of the other party that were necessary for the proceedings. Legal representation costs are capped, usually at 300 EUR. 

If the applicant fails, they must pay the opposition fee (320 EUR) and the costs of the opposing party (e.g., 300 EUR), totaling 620 EUR.  If the opponent withdraws the opposition after the "cooling-off" period, they bear the costs.

These rules create pressure on both parties to reach an amicable solution, as the costs of full proceedings can be higher than limited reimbursements. At the same time, it underscores the importance of strategic decision-making – when to defend, when to negotiate, and when to withdraw an opposition. 

Clients need a partner who not only understands the law but also the economic impacts and can advise on the optimal strategy to minimize risk and costs.

Risks for Applicants (Rejection, Rebranding)

If the opposition is justified, the trademark application will not be registered. The need to change a name or logo after years on the market is financially and time-consuming. It includes updating websites, social media, and marketing materials. Application fees are not refunded if the application is withdrawn or rejected.

Preparation or revision of contracts and legal opinions will help minimize the risk of rejection and avoid rebranding costs.

If the opposition fails, the opponent must pay the applicant's costs. If the opponent fails to prove genuine use of their mark (if it is older than 5 years), it may lead to the rejection of the opposition and weaken their market position. Furthermore, if the new mark is registered and its use would devalue the image or prestige of the earlier mark, it may lead to dilution of distinctiveness or tarnishing of reputation.

Financial and Reputational Risks and How ARROWS Helps

This table summarizes the key financial and reputational impacts of opposition proceedings and highlights how ARROWS provides comprehensive protection.

Why is ARROWS Your Reliable Partner in Brand Protection?

In the field of intellectual property protection, especially in the complex environment of EUIPO, it is crucial to have a partner who understands not only the law but also business objectives. The law firm ARROWS is exactly such a partner.

With twenty years of experience in B2B legal consulting, ARROWS law firm has deep knowledge and practical experience with opposition proceedings at EUIPO and brand protection in Europe and beyond. 

Thanks to the ten-year-built ARROWS International network, it provides legal services outside the Czech Republic and practically daily addresses issues with an international element. Many companies have global ambitions, and therefore this international capability is crucial for clients operating in the global market. 

Comprehensive Legal Services for Your Protection

ARROWS offers a comprehensive range of legal services for intellectual property protection. This includes drafting internal guidelines that help companies set up effective processes for managing and protecting intellectual property.

Furthermore, it involves the preparation of documentation that protects against fines and penalties, ensuring compliance with legal requirements and minimizing risks. The law firm also ensures the preparation of legally required documents for proceedings before EUIPO and provides legal consultations that protect against fines and inspections, thus preventing potential problems.

In contractual relations, ARROWS offers the preparation or revision of contracts to ensure the legal correctness of all documents related to the brand, such as licensing agreements and coexistence agreements. 

Clients are provided with representation in courts and administrative bodies, including EUIPO and Boards of Appeal, ensuring strong legal defense. ARROWS also assists with administrative processes for obtaining licenses or necessary permits and offers expert training for employees or management, including certification, so that teams understand the importance and proper use of intellectual property.

Our Portfolio and Emphasis on Speed and Quality

In the portfolio of the ARROWS law firm, there are more than 150 joint-stock companies, 250 limited liability companies, and 51 municipalities and regions.  These experiences provide a deep insight into the diverse needs of clients and lend credibility to claims of expertise. 

For the target group, such as small and medium-sized enterprises, large companies, and investors, these numbers are convincing because they show the scope and depth of experience with various types of entities. ARROWS prides itself on the speed and high quality of the services provided.

Connecting Clients and Supporting Innovative Ideas

ARROWS can connect clients with each other if they have interesting investment or business opportunities. 

For clients, especially investors, startups, and business owners, the possibility of networking and support for innovation is a significant added value. It shows that ARROWS is not just a service provider but an active partner in the business environment. The law firm is also happy to listen to interesting business or entrepreneurial ideas.

Brand protection in Europe is a complex process that requires not only deep legal knowledge but also strategic thinking and careful preparation. Opposition proceedings at EUIPO represent a crucial mechanism that can either protect valuable assets or, conversely, thwart investments in a new brand. Do not be caught off guard by potential risks and entrust brand protection to experienced professionals.

The ARROWS law firm offers a complete package of services, from initial legal consultations and drafting internal guidelines, through the preparation of documentation that protects against fines and penalties, to representation in courts and administrative bodies and expert training for employees or management. 

Thanks to extensive practice with more than 150 joint-stock companies and the international network ARROWS International, they handle the most complex cases with an international element daily. They ensure speed, high quality, and an individual approach so that clients can fully focus on developing their business.

Do you need to assess the risks associated with your brand, defend against an opposition, or proactively protect your rights in Europe? Contact ARROWS today for a non-binding consultation. They are ready to help you.