You have just applied for a trade mark. What happens next?
Once filed at OHIM, your trade mark will be processed by us to check that it can be registered. There are various steps.
The timeline is composed of the 'examination period', the 'opposition period' and then the registration. The examination period starts with the receipt of the application and the ends with the publication of the application. The opposition period starts with the publication of the application and terminates with the end of opposition period. The registration takes place thereafter. The registered trade mark is then published.
Receipt of the application
Publication of the application
End of opposition period
Publication of the registered mark
What happens during the examination period
The following workflow will give you an overview of the actions taken by OHIM during the examination period. They occur almost simultaneously. You can follow the progress of your application status online by accessing eSearch or through your user area.
The following is for applications filed direct with OHIM. Find out about the route to registration for international applications designating the EU.
The timeline comprises the following steps: 'filing date', 'classification', 'formalities', 'absolute grounds', 'translation' and 'search'. Clicking on each of these steps provides more information. Once all the steps have been completed the trade mark is published.
Publication of the application
We check that your trade mark application contains the mandatory and basic information required: a request for application, a correctly identified owner, a graphic representation of the mark and a list of goods and services. Payment of the basic fee must also be made within one month of the filing date. From then on, you should regularly monitor trade mark applications to check whether any of them conflict with your trade mark.
The goods and services you seek protection for are reviewed to see if they have been correctly classified and their nature has been clearly indicated. If you have used TMclass , your list of goods and/or services will be accepted automatically.
All the details you have entered on your application are reviewed to make sure that everything is as it should be; the signature, languages, owner and/or representative data, priority and/or seniority claims are all reviewed.
Your trade mark is analysed to see whether it is distinctive but not descriptive.
Your trade mark application is translated so that details of it can be published in all the official languages of the European Union.
We carry out a search in the CTM database for identical and/or similar marks. The results are sent to you before we publish your trade mark application. Owners of previously registered trade marks or trade mark applications quoted in the report are informed — by letter — about your trade mark application. This is called a 'surveillance letter'. The results of both search reports and surveillance letters are for information only.
If we detect an error or have to tell you about an objection, we will send an official communication to your user area indicating what we have found; you then have two months to remedy any deficiencies and reply. You may ask for an initial two-month extension of time to prepare your response. The first extension will normally be granted automatically but the second will need to be justified.
If you didn't select the option to receive communications through your user area we will send you a fax or, if we don't have a fax number for you on file, a letter. If you have appointed a representative we will only communicate directly with them.
In some procedures, applicants (or their representative) will be contacted by phone by our examiners to remedy simple objections.
If we believe that your answer doesn't entirely address our concerns, or if you fail to respond, we will issue a final decision, either partly or entirely refusing your application or the claim made in your application (such as a priority claim). Alternatively, we might amend your application details if appropriate (for example, by deleting the description or adding a colour claim). Remember, if you are not happy with the outcome, or think there has been an error you have the right to appeal.
If no objection is raised, we will publish your trade mark in all the official languages of the EU. This means that we make public the fact that you have applied for this particular trade mark for the goods and/or services specified.
What happens during the opposition period
From the date of publication onwards, third parties who believe your trade mark should not be registered have three months to object.
There are usually two motives for objecting
The third party has an earlier right (or more than one) and believes that yours will, if registered, conflict with itIn order to prevent your mark from being registered, they must oppose your trade mark by filling in a form and paying a fee of €350. If an opposition is filed, your mark will be subjected to — and must succeed in — opposition proceedings. An opposition can be filed within three months after a trade mark has been published.
The opposition procedure:One in five applications for CTMs are opposed by the owners of trade marks that are already on the market. We decide on these disputes after both parties, the applicant and the opponent, have submitted evidence and arguments. The applicant can minimise the risk of opposition by searching for potential conflicts before they apply.
The following diagram will give you an overview of the various steps of the opposition proceedings:
The timeline begins with the publication of the application and ends with the publication of the registered mark and is composed of the following steps: 'filing of an opposition', 'admissibility check', 'the cooling-off period', 'the adversarial part of the proceedings', and 'the end of the proceedings'. Clicking on each of these steps provides more information.
Publication of the application
Publication of the registered mark
The 'cooling-off' period
If the notice of opposition is accepted, we send a notification to both parties setting time limits for the proceedings. The proceedings start with a period during which parties can negotiate an agreement; this is called the 'cooling-off' period. During this period the parties are given the option of terminating the proceedings. The cooling-off period expires two months after the notification of admissibility. It can be extended for 22 months and can last for a total of 24 months. Either party can opt-out of the extension at any time. Once the cooling-off period has expired, the adversarial part of the proceedings begins.
Filing of an opposition:
We strongly recommend that you read the help files.They will give you guidance on completing and submitting the Notice of Opposition form and explain what fees are due and how to pay them.
We check if the Notice of Opposition meets the formal requirements set out in the Regulations. In other words, we examine whether it is acceptable.
The adversarial part of the proceedings
At this point, the parties involved are invited to send additional information and evidence to support their positions. The Office first gives the opponent two months to complete their file. The opponent may include any facts, arguments and evidence that they consider necessary to support the opposition.
Then the Office gives the applicant two months to reply. Finally, the opponent is given the opportunity to comment on the observations submitted by the applicant. Generally speaking, these are the three stages of the process. However, OHIM may agree to or request further 'rounds', if required.
End of the proceedings
The adversarial part of the proceedings comes to an end when OHIM informs the parties that no more observations will be allowed. This means that the file is ready for the Opposition Division to take a decision on the opposition.
When we issue a decision there are various possible outcomes
- The CTM application does not conflict with the earlier right(s); the opponent then pays costs (typically €300) and the application proceeds to registration
- The CTM application conflicts with the earlier right(s); the application then fails and the CTM applicant pays the opposition costs (typically €650)
- The CTM application partially conflicts with the earlier right(s); the goods or services in conflict are then removed from the list and the application proceeds to registration (costs are generally shared)
The proceedings may also end at any time if the applicant withdraws their CTM application or the opponent withdraws their opposition.
Costs may also be incurred if any party withdraws from proceedings.
All opposition decisions are published online and all adversely affected parties have a right to appeal.
The third party considers that your trade mark should not have been acceptedThey can invoke any ' absolute ground' that they see fit. They should send a corresponding communication to the Office explaining why they believe the trade mark should not be registered. We call this a 'third party observation' and it is free of charge. However, it should only be used when a serious reason for contesting the trade mark exists.
Once the observations are received, the Office will issue a receipt to the person making the observations (the 'observer'), and the observations will be communicated to the applicant. Thereafter, the observer will not receive any further communication from OHIM. In particular, the observer will not be informed about the outcome of any re-examination of the application. However, observers wishing to be informed of the further fate of the CTM application concerned will be able to access information about its status via eSearch.
Proof of registration
If nobody files an opposition or third party observations, your trade mark is registered and the registration is published. This is done so that other trade mark owners and the public in general are aware that this particular trade mark is yours.
The publication of the registration is free of charge and a certificate of registration is issued.
You are invited to download the certificate two days after publication. No paper copy of the certificate of registration will be issued. However, certified or uncertified copies of the registration certificate may be requested. This may be necessary if you want to claim the priority of your CTM. Certain jurisdictions will accept a reference to our database (eSearch), while others will request a more official document, which you can obtain using the inspection of file request.