8. Questions on opposition

Notice of opposition may be filed within a period of three months following the publication of the Community trade mark application. The official publication date is that which appears on the front cover of the Community Trade Marks Bulletin. The notice of opposition and payment of the opposition fee must be received by the Office within this time limit.

Yes, OHIM accepts a notice of opposition against a CTMA that is received by fax and/or post before the CTMA has been published; thus before the commencement of the opposition period. The opposition will be kept on hold and be deemed to have been filed on the first day of the opposition period, namely the first day after the publication of the CTMA in part A1 of the CTM Bulletin..

8.3. How much does it cost to file notice of opposition?

The opposition fee is 350 euro, which should be paid within the same time limit as that which is specified for filing notice of opposition. Any payments to the OHIM should be effected in euro.

8.4. How do I pay the opposition fee?

The payment of any fees or charges owed can be effected by transfer to the Office's bank accounts. In addition, payment can be made through the debiting of a current account held with the Office. See the answer to Question 3.2 above.

8.5. When is the payment of the opposition fee deemed to have been made?

Payments by bank transfer are deemed to have been made on the date on which the OHIM's bank account is credited. Finally, where payment is made through the debiting of a current account held with the Office, payment is deemed to have been made on the date on which the notice of opposition is received.

8.6. What happens if payment is not received in time?

Payments must reach the OHIM within the time limit specified for filing opposition, which is three months. However, provided that all the steps necessary for effecting payment are taken within this time limit, the Fees Regulation allows for payment to be considered as made on the condition that the following requirements are met: where payment is made by bank transfer, the payment order must have been given within the aforementioned time limit. However, if the payment order has not been made within the last ten days of the time limit specified, a surcharge of 10% will be payable.

8.7.Is there a guide on how to file notice of opposition?

The Office has published a Manual concerning the opposition proceedingswhich attempts to explain in detail the practical application of the provisions of the CTMR and the Implementing Regulation governing opposition proceedings. In addition, a form for filing notice of opposition is available from the Office, containing relevant explanatory annotations.

8.8. In what language must the notice of opposition be filed?

The Opposition Division of the OHIM uses the five languages of the Office (Spanish, German, English, French and Italian). The notice of opposition may only be filed in one of these languages which must also coincide with one of the two languages chosen by the applicant for the Community trade mark, as indicated upon publication of the application in the Community Trade Marks Bulletin. This language will then be used throughout the opposition proceedings.

If the notice of opposition is filed in one of the languages of the Office (Spanish, German, English, French and Italian) which does not, however, coincide with the languages of the Community trade mark application opposed, the opponent is granted a time limit of one month in which to produce a translation into the appropriate language. This time limit, which is not subject to notification on the part of the Office, starts to run from the expiry of the deadline for filing opposition.

8.9. How should the notice of opposition be submitted to the OHIM?

Communications addressed to the Office may be submitted by various means:

by submitting a signed original to the Office either by post, hand delivery or other means;
by transmitting a signed original by fax;
by telex or telegram.

The requirements concerning the submission of documents by any of the above-mentioned means are set out in Rules 80, 81 and 82 of the IR.

OHIM also accepts opposition applications by electronic means using the E-Opposition service.

8.10. Where are opposition proceedings conducted?

Opposition proceedings are conducted before the OHIM whose seat is in Alicante (Spain). However, these proceedings are designed to be conducted mainly in writing and therefore do not require the physical presence of the parties, except where oral proceedings are essential. Similarly, these proceedings are entirely governed by the CTMR and the IR, which constitute an independent legislative body.

8.11. What can be cited as justification for opposition?

The notice of opposition can be based on a trade mark application or on an earlier registered trade mark. The trade marks can be national trade marks from one of the Member States of the EU (national), international trade marks (registered under the Madrid Agreement and Protocol) or trade marks from the BENELUX Trade Mark Office. It is also possible to base opposition on well-known trade marks protected under Article 6 bis of the Paris Convention. Finally, opposition can also be based on earlier rights within the EU that are not just applicable to particular localities, provided that the national law governing these rights allows the proprietor to prohibit the use of a subsequent trade mark.

8.12. How will I know if an application for a Community trade mark which is similar to my national trade mark has been filed?

The existence of earlier rights constitutes a relative ground for refusal of the registration of a Community trade mark. The Office cannot examine of its own motion such grounds for refusal. Consequently, the Community trade mark application is published in the Community Trade Marks Bulletin and a period of three months is given in which to file notice of opposition to protect earlier rights which the future Community trade mark could affect.

So, the Community Trade Marks Bulletin constitutes the means of publicizing the fact that a Community trade mark application has been filed, thus allowing the proprietors of earlier rights to protect such a right.

8.13. How will I know if someone has filed a notice of opposition against my application?

Notices of opposition, filed within a time limit of three months following the publication of the Community trade mark application, are processed by the Opposition Division. After checking whether the fee has been paid in time, the Opposition Division will examine whether the notice of opposition fulfils the basic requirements. If it finds a deficiency that can be remedied, the opponent is requested to do so.

Once this phase has drawn to a close, the applicant for the Community trade mark will be advised of the notice of opposition. At this point, a period of two months commences in which both parties can contact one another to try to make a friendly settlement. This is known as the "cooling off" period.

8.14.Can I base my opposition on several different trade marks of which I am the proprietor?

A natural or legal person may file a notice of opposition based on as many trade marks as are considered necessary, provided that he/she/it is the proprietor.

8.15. Can I base opposition on trade marks belonging to my company and another subsidiary company?

No. The opponent must be a single natural or legal person and he/she/it must base notice of opposition on trade marks of which he/she/it is the proprietor. Consequently, if opposition to a Community trade mark application is based on several trade marks belonging to different companies (different natural or legal persons), each person will have to file a separate notice of opposition.

The only circumstance under which several persons can appear as opponents on the same notice of opposition is when they are co-proprietors of the opposing trade marks.

8.16. What essential elements should the notice of opposition contain?

In order for a notice of opposition to be considered as filed validly, there are certain elements and details providing the basis for the notice of opposition which are essential, that is to say, they must appear from the outset. Consequently, these elements and details must be furnished within the time limit established for filing notice of opposition.

The trade mark application opposed, the opponent, the earlier rights upon which the opposition is based and the grounds invoked should all be clearly identified within the aforementioned time limit. The CTMR requires the information furnished to enable identification beyond any doubt of such elements.

Accordingly, the trade marks will be considered clearly identified if their nature, the country in which they have effect and their registration numbers are indicated. The opponent will be considered clearly identified if his/her/its nature (natural or legal person), full name or registered address and full postal address are indicated. The grounds upon which the opposition is based will be considered clearly identified if the appropriate legal grounds referred to in Article 8 of the CTMR are specified.

If the form provided by the Office is used, supplying the information requested under the relevant headings is sufficient. For example, when indicating the grounds for opposition, it will be sufficient to select one or more of the boxes listed under the heading "Grounds for Opposition", although it is advisable to elaborate on these arguments at a later point.

8.17. Do I have to translate the certificates issued by national offices attesting that I am the proprietor of the trade marks upon which the opposition is based?

Yes. The language of the proceedings is established when the opponent chooses one of the languages of the Office, which must also coincide with one of the two languages indicated in the application for the Community trade mark. All correspondence with the Office as well as any documents upon which the opponent bases his/her/its right must be drawn up in or translated into the language of the proceedings.

Only where supporting documents furnished in the course of the proceedings (catalogues, brochures, etc.) are concerned, does the Office have the option of requesting a translation or accepting them in their original language. In practice, the Office allows parties to translate the most important elements of the documents furnished which form the basis of the opponent's right and the grounds relied upon.

Thus, the translation of certificates may be limited to administrative details which are currently in force, excluding, for example, the translation of recordals of renewals made prior to the most recent one. The translation of brochures, journals or catalogues should be limited to those elements that the opponent wishes to use as evidence.

8.18. What are the advantages of trying to reach a friendly settlement during the "cooling off" period?

The "cooling off" period consists of the two months following the notice of opposition and is prior to the commencement of the adversarial phase (in which both the opponent and the applicant participate). Since the adversarial phase has not yet commenced, if both parties reach an agreement that puts an end to opposition, neither party will be ordered to pay costs.

In addition, if the agreement reached is based on restricting the list of goods and services of the Community trade mark by excluding those affected by the opposition or if it is based on the withdrawal of the Community trade mark application, the Office will refund the opposition fee to the opponent.

8.19. The notice of opposition served on me by the Office seems incomplete (it does not contain any proof of earlier rights, some of the evidence has not been translated, etc.). Is this normal?

The Office serves notice of opposition once it has established that, in accordance with the CTMR, the opposition is admissible. This does not mean, however, that it is “complete”. After the expiry of the “cooling off” period and if the parties have not reached a friendly settlement, the opponent has a period of two months in which to complete his file by providing the evidence upon which his arguments and rights rely. The Office will then send the documents received to the applicant so that he may submit his observations within a period of two months.

8.20. What does it mean when it is stated that the applicant can request "proof of use" from the opponent?

Under Article 15 of the CTMR and Directive 98/104/EEC, trade marks are, in all the Member States of the European Union, subject to the obligation of being put to a real and genuine use on the market within a period of five years following their registration. Accordingly, the CTMR grants the applicant the opportunity to request that the opponent furnishes proof of the use of the trade marks upon which opposition has been based, provided that these trade marks have been registered for more than five years.

Those goods or services in respect of which proof of use has not been furnished will be excluded from the opposition. In other words, opposition proceedings may only continue in relation to the trade marks and goods and services for which proof of real and genuine use has been furnished. If proof of use is not furnished in respect of any of the goods and services for which the earlier trade mark(s) is (are) registered, the opposition will be rejected.

8.21. What do I have to submit as proof of use?

The evidence submitted must consist of "indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based". For example, evidence may consist of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and sworn or affirmed statements.

8.22. Can the successful party in opposition proceedings recover the costs of these proceedings?

A decision on costs has to be taken in all opposition proceedings that have passed the cooling off stage, i.e. where the adversarial part of the proceedings has started, and that have come to an end. The general rule is that the losing party, or the party who terminates the proceedings by withdrawing the CTM application or opposition, shall bear the fees and costs incurred by the other party. However, where each party succeeds on some and fails on other heads or for reasons of equity, a different apportionment of costs may be determined.

The decision on apportionment of costs is given in a decision on substance. In all other cases where the Opposition Division closes the case, a decision on costs is attached to the notification. Where the costs are limited to representation costs and the opposition fee, the decision fixing the amount of costs shall be included in the decision on the apportionment of the costs according to the ceilings set out in Rule 94 of the IR.