眾律國際法律事務所

Grounds for opposition according to the European Union Trademark Regulation

Opposition is a legal proceeding in which a third party seeks to prevent a pending application for a trademark from being granted registration. This way, according to Article 8 EUTMR upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered. In case of the European Union trademarks, this procedure will take place before the EUIPO.

The grounds on which an opposition may be based are called relative grounds for refusal, which are found in Article 8 EUTMR, and are different to the absolute grounds for refusal from Article 7. The difference between these two kind of grounds is that relative grounds are inter partes proceedings, and concern earlier rights that take precedence over the EU trademark in accordance with the principle of priority. On the other hand, absolute grounds are examined ex-officio by the office during the registration procedure.

Therefore, the onus is on the earlier right owner to be observant and vigilant concerning the filing of applications by others.

The grounds on which an opposition may be made are set out in Article 8 EUTMR.

This article (1)(a) allows the proprietors of an identical or similar prior trademark registered for identical or similar goods or services to request opposition, when there is a likelihood of confusion. These “earlier trademarks” include (1)(b):

• Community trademarks;
• Trademarks registered in a EU member state;
• International trademark registrations that have effect in an EU member state
• Trademarks that are well known in a Member State in the sense of Article 6bis of the Paris Convention (which need not be registered).

The meaning of “earlier trademarks” refers to those having an earlier date (not hour or minute) of application.

An opposition filed on the basis of Article 8(1)(b) must demonstrate that there is likelihood a confusion between both trademarks, and it must be assessed globally, taking into consideration all factor relevant to the circumstances of the case.

Article 8(3) is based on the situation where a Community trademark application has been filed by the agent or representative of a trademark owner, without the consent of the proprietor. 

Article 8(4) enables the proprietor of a earlier non-registered trademark or other signs used in the course of trade of more than mere local significance to prevent the registration of a later application, if pursuant to the law of the member state governing the sign, it entitles its owner to prohibit the use of a subsequent trademark.

Article 8(4a), recently added on the Amending regulation, enables beneficiaries of the protection of designations of origin and geographical indications under the Union legislation or member state laws to oppose the registration of a later application, even beyond the limited scope of ex officio protection of such rights on absolute grounds.

The last opposition ground (article 8(5)) enables the proprietors of an earlier reputed registered trademark to prevent registration of a later application that would encroach on the earlier reputed mark. Likelihood of confusion is not a condition for the application of this article, since this article protects the heightened effort and financial investment that is involved in creating and promoting trademarks to the extent that they become reputed and to facilitate full exploitation of the value of the marks.

References:

European Union Trademark Regulation http://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1456313698327&uri=CELEX:02009R0207-20130701 and Amending Regulation http://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1456313648273&uri=CELEX:32015R2424

Guidelines for examination of European Union Trademarks https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/trade_marks_practice_manual/WP_LR_2016/Part-C/00-part_c_opposition_section_0_introduction/TC/part_c_opposition_section_0_introduction_tc_en.pdf