What is the opposition procedure?
The opposition procedure is an administrative procedure that allows the owner of an earlier trademark to prevent a third party from registering a trademark identical or close to his own without having to go to court.
The opposition procedure is carried out before a national (e.g. INPI in France) or regional (e.g. : the EUIPO in the European Union) of brands.
Who can form opposition?
In general, opposition proceedings are filed by the owners of an earlier right (e.g. the owner of a registered trademark) or their representative.
The opposition procedure in France is also open:
- to local and regional authorities in the event of damage to the name, image or reputation of the local and regional authority.
- to organizations for the defense and management of a geographical indication (GI) filed with the INPI and relating to an industrial or artisanal product, in the event of infringement of this GI
- to the Director of the INAO (Institut National de l'Origine et de la Qualité) in the event of damage to the name, image or reputation of an AOC, PDO, PGI or GI relating to spirit drinks.
It should be noted that it is sometimes compulsory to go through an authorized agent:
- when the opposition is filed on the basis of a co-ownership mark (with several owners)
- when the opponent is not domiciled in a Member State of the European Economic Area.
What can we oppose?
Against a later trademark application. By "subsequent", we mean a trademark whose filing date comes after the birth of a right of which you would be the owner.
It is not possible to file an opposition against a trademark that is used without having been registered, nor against a sign other than a trademark (company name, trade name, domain name...). In order to act against these uses, it is generally necessary to go to court.
On what basis can opposition be lodged?
Until 2019, only the owner of an earlier trademark could file an opposition before the INPI. It was not possible to act on the basis of an unregistered trademark or a company name.
Since 2020, and the reform of the opposition procedureIf you are a trademark owner, you can file an opposition against a trademark application:
- a brand (French brand, European brand, international brand...)
- a name or company name
- a commercial name, a sign or a domain name (if their scope is not only local).
In addition to the rights mentioned above, it is possible to invoke other prior rights in an action before the EUIPO: a well-known unregistered trademark (but it will be necessary to prove that it is well-known), or any other sign used in the course of business, having a national scope, a domain name, a model, a copyright...
In short, persons who use a sign in the course of business can file an opposition against a trademark application. However, the sign must be used / registered in the territory where the opposition is to be filed. Thus, if you are the owner of a French trademark, you can file an opposition before the INPI (in France) and before the EUIPO (in the EU). But it will not be possible to act against an Italian or Spanish trademark application.
Within what time frame?
In France, the opposition period is two months from the publication of the contested trade mark application.
Example: the French trademark that bothers you is filed on August 10, 2021. It is published on September 15, 2021. You have until November 15, 2021 to file an opposition.
In the European Union, the opposition period is three months from the publication of the contested trademark application.
Example: the European trademark that bothers you is filed on January 16, 2022. It is published on 28 February 2022. You have until April 28, 2022 to file an opposition.
What is the procedure to follow?
You have to identify the competent office (if the trademark that bothers you is a French trademark, the opposition will take place before the INPI), then fill in the online opposition form, and pay the corresponding fees. All of this must be sent by the last day of the opposition period at the latest.
NB: in France, since the 2020 reform, it is possible to submit the opposition brief (the arguments establishing the existence of a likelihood of confusion between your prior right and the trademark you wish to contest) within one month of the end of the opposition period. However, the opposition will only be notified to the applicant of the contested trademark once the procedure has been completed.
Example: You have until November 15, 2021 to file an opposition against the French trademark that is bothering you. You file your form and pay the fees on November 14. You have until December 15, 2021 to send your opposition brief to the INPI.
What is the cost of an opposition?
The cost of an opposition varies depending on the office where the opposition is filed:
In France, it is necessary to count at least 400 € (if the opposition is based on a single right) + 150 € per additional previous right invoked.
At the European level, the cost is 320 €.
Note that it is preferable to use a specialized counsel for the drafting of the opposition brief - in this case, additional costs for fees must be anticipated.
How to write an opposition?
In this case, the same method is applied as in a background check.
IMPORTANT: It is useless to use factual arguments in the opposition brief, the examiner does not care about them. He will only compare the marks as filed. Therefore, do not use arguments such as "I filed the mark like this but I use it like that", do not tell the history of your company or the reasons why you were scandalized to discover the filing you are opposing. Similarly, do not bother to tell about your possible email exchanges with the opponent, and it is completely useless to compare your trademark or the opponent's trademark to other existing trademarks, unless the comparison brings a strong legal argument that goes in your direction and has a real link with your case.
The argument is made in 2 parts: comparison of signs, then comparison of products and services.
The comparison of the signs is made from 3 angles:
- Visual comparison: do the signs look the same, and if so, why? Same number of letters, same prefix or suffix...
- Phonetic comparison: are the tones of each brand identical or close?
- Intellectual comparison: do the signs have the same meaning, do they refer to the same field, do they belong to the same lexical field?
The comparison of goods or services consists of asking whether the goods and services in question are identical, similar or complementary. Remember that goods and services belonging to different classes may be similar. Similarly, there may be complementarity between goods and services. See our sheet on availability for more details.
IMPORTANT: in an opposition, similarity and complementarity must ALWAYS be argued. Do not rely on the INPI to substitute itself for you in the argumentation because it does not have to do so. If you simply state that goods or services are similar or complementary without explaining why, you run the risk that the decision will be rendered without taking these goods or services into account, which will then remain in the wording of the opposing mark.
What are the consequences of opposition?
If the trade mark office recognises the opposition as well-founded, the trade mark shall be refused registration in whole or in part. Otherwise it shall be registered.
In France, opposition has no financial consequences: the loser owes nothing to the winner.
In the European Union, the loser of the opposition must pay the winner a lump sum for the costs of the procedure, but only if the winner claims it. This sum includes the reimbursement of the opposition fee (320€) as well as 300€ of miscellaneous expenses incurred by the winner. No proof of these costs is required.
Is the Board's decision questionable?
Yes, it's questionable.
In France, however, you have to go directly to the Court of Appeal with all that this implies in terms of time and expenses (representation by a lawyer...).
At the European level, the decision of the office can be challenged before the Board of Appeal.
I did not file an opposition within the time limit, can I still challenge the third party's mark?
Yes, but no longer in the form of an opposition, since the deadline has passed. However, you can file an action for trademark nullity for infringement of your prior rights. This action can be done before the INPI or the EUIPO, but it is a more complex and expensive procedure than an opposition.
It is therefore recommended to monitor your brands in order to be informed as soon as it is published, and to be able to react in time, before the end of the opposition period.