What Can Constitute an EU Trade Mark?
An EU trade mark, meaning a trade mark registered at the level of the European Union through the European Union Intellectual Property Office (EUIPO), may consist of any sign, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of their packaging, or sounds.
Such signs must be capable of distinguishing the goods or services of one undertaking from those of other undertakings, and their representation in the Register of European Union Trade Marks must enable the competent authorities and the public to determine clearly and precisely the subject matter of the protection afforded to the trade mark proprietor.
Opposition to an EU Trade Mark
Natural persons, legal persons, and public-law entities seeking to become proprietors of an EU trade mark may encounter various obstacles. One such obstacle is an opposition filed against their application for registration with the EUIPO.
Opposition is a procedure involving two parties and allows the opponent to protect an earlier EU trade mark or other prior rights against a new application for registration of an EU trade mark filed by an applicant.
Who May File an Opposition and on What Grounds?
As mentioned above, the opposition procedure involves two parties, one of which is the opponent. The opponent may be the proprietor of an earlier trade mark or other prior rights, or a representative thereof.
Some of the grounds on which an opposition may be filed include:
The trade mark applied for is identical to an earlier trade mark of the opponent, and the goods or services for which registration is sought are identical to those for which the earlier trade mark is protected.
There is a likelihood of confusion in the territory in which the opponent’s earlier trade mark is protected, due to the identity or similarity of the mark applied for and the earlier trade mark, as well as the identity or similarity of the goods or services designated by the two marks.
The opponent owns an earlier EU trade mark that enjoys a reputation within the Union, or an earlier national trade mark that similarly enjoys a certain reputation in the relevant Member State, and the mark applied for is identical or similar to that earlier trade mark, even where the goods or services covered by the application are identical, similar, or dissimilar to those for which the earlier trade mark is registered, where use of the applied-for mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
These and other grounds for opposition are set out in Article 8 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 July 2017 on the European Union trade mark.
Important Aspects of the Opposition Procedure
As with any procedure, the opposition procedure is subject to a strict time limit: the opponent may file an opposition form within three months from the publication of the EU trade mark application.
Following the examination of the opposition, and where it is found to be admissible, the parties involved will be invited to submit additional information and evidence in support of their respective positions.
If the opposition is upheld, the contested EU trade mark application will not be registered. If the opposition is rejected, the Office will proceed with the registration of the EU trade mark.
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