trademark opposition

The opposition in French and European law

The opposition procedure allows a third party with an earlier right to prevent the registration of a later mark which would infringe his rights.

One can only oppose trademarks that have been registered before a trademark office (INPI in France, EUIPO for the European Union...). Trademarks that are used without having been registered can only be subject to legal action (for infringement, unfair competition).

The opposition procedure in France

This was introduced in the Intellectual Property Code in articles L. 712-3 to L. 712-5 by a 1991 reform. Before the opposition procedure was introduced, holders of a prior right were forced to go through a trial, and thus to bear the costs and the length of it. Now, it is sufficient to file an opposition before the INPI (Institut national de la propriété intellectuelle) for a small fee (400 € INPI fees to date) to obtain the rejection of a registration application.

Who can form opposition?

A few years ago, only the owners of an earlier trademark filed with the INPI were entitled to file an opposition before the INPI. Since 2020, the opposition procedure is open to any owner of a prior right. This right can be a trademark, a company name, a trade name, a sign or even a domain name (under certain conditions).

The opposition procedure in France is also open:

  • to local authorities
  • to the defense and management organizations of a geographical indication (GI) registered with the INPI
  • the director of the INAO (National Institute of Origin and Quality).

But generally speaking, the vast majority of opposition proceedings are filed by the owners of a registered trademark. Lhe owners of a trademark that has not yet been registered can also file an opposition, but the INPI will only make a decision after the registration of their trademark.

What is the time limit for opposition?

In France, the opposition period is 2 months from the date of publication in the Official Bulletin of Industrial Property. Once this period has expired, an action for nullity remains possible for holders of a previous right.

What is the opposition procedure?

To file an opposition, the owner of an earlier trademark must do so online, on the INPI website. Several pieces of information must be included in the opposition request:

  1. The identity of the opponent as well as evidence of the existence of an earlier right (copy of the earlier trademark)
  2. The references of the later mark against which the opponent is filing an opposition
  3. The list of goods and services concerned by the opposition request
  4. The arguments put forward by the opponent to show that the marks in question are identical or similar (comparison of the signs and comparison of the goods/services)

The opposition fee in France is 400 euros (for the first right invoked). If several rights are invoked, additional fees will have to be paid.

If the opposition is deemed admissible by the INPI, the contested mark will be refused registration in whole or in part, but this will not entail any financial consequences for the parties. Indeed, the INPI does not have the power to order the loser to pay costs or damages, as this is a prerogative of the judges only.

If either party is dissatisfied with the INPI's decision, it may appeal the decision to the Paris Court of Appeal. It should be noted that no new elements can be added to the file. The judge will rule on the same file as the INPI.

The opposition procedure at European level

The principle is the same as for an opposition under French law. Introduced by Article 41 of the Community Trademark Regulation, opposition is filed exclusively with the EUIPO (European Union Intellectual Property Office), the competent body with regard to European brands.

Who can form opposition?

The European opposition is open to a large number of right holders. Thus, the following can file an opposition:

  • owners of an earlier European trademark, but also owners of an earlier national trademark (filed in one of the 27 EU member states) designating any of the EU countries
  • the holders of a sign used in the life of business (domain name, company name, trade name...)
  • owners of a well-known unregistered trademark (subject to demonstrating notoriety)

What is the time limit for opposition?

In Europe, the opposition period is three months from the date of publication in the European Trademark Bulletin. Once this period has expired, the owners of an earlier trademark can still file an invalidity action before the EUIPO.

What is the opposition procedure?

The opposition procedure is similar to the French one in that it must also be in writing and contain the same information. However, the cost of the opposition and the consequences differ from the procedure before the INPI. At the European level, the opposition fee amounts to 320 euros. However, if the opponent wins the case, the losing party is often ordered to pay the opponent the costs of the opposition (fee + fixed compensation of €300).

If one of the parties wishes to challenge the EUIPO decision, it may bring the case before the Board of Appeal of EUIPO. The case may go as far as the Court of Justice of the European Union if necessary.

Updated: 13/04/2022