January 8

The opposition

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. EUIPO in the European Union) trademark office.

Who can form opposition?

Before the INPI, in principle only the owner of an earlier trademark can file an opposition. If it is only a person using a trademark without having registered it, or having an earlier company name or domain name, it is not possible to file an opposition.

It should be noted that since 2014, 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.

In front of theEUIPOThe owner of an earlier trademark may file opposition, as may the person who exploits a sign used in the course of trade (see below).

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.

No opposition can be filed against a trademark that is used without having been registered, nor against a sign other than a trademark (company name, trade name, domain name, etc.).

On what basis can opposition be lodged?

In France, you can only rely on one brand, which must produce effects in France. This can be :

  • From a French brand
  • Of a Community trade mark
  • An international brand targeting France

In the European Union, you can lodge opposition on the basis of several prior rights, namely :

  • One or more Community trade mark(s) or national trade mark(s) valid in one of the countries of the Union, or one or more international trade mark(s) relating to one of the countries of the Union
  • One or more notorious unregistered trademark(s) (notoriety must be proven)
  • One or more sign(s) used in the life of the business having a national scope: a company name, a trade name, a model, a copyright...

Within what time frame?

In France, the opposition period is two months from the publication of the contested trade mark application.

Example: the trademark that bothers you is registered on March 28, 2015. It is published on May 15, 2015. You have until July 15, 2015 to file an opposition.

In the European Union, the opposition period is three months from the publication of the contested trademark application.

Example: the trademark that bothers you is registered on June 16, 2015. It is published on July 28, 2015. You have until October 28, 2015 to file an opposition.

What is the procedure to follow?

You must complete the online opposition form, accompany it with your arguments and pay the corresponding fees. It must be sent by the last day of the opposition period at the latest (where applicable, the postmark will be taken as proof).

How to write an opposition?

In this case, the same method is applied as in a background check.

IMPORTANT: It is not necessary to use factual arguments in the opposition brief, the examiner does not need to. He will simply compare the marks as filed. Therefore, abandon arguments such as "I filed the trademark like this but I use it like this", avoid telling the story of your company or the reasons why you were scandalized to discover the application you are opposing, do not bother to tell about any email exchanges with the opponent, and it is completely useless to compare your trademark or the opponent's trademark with other existing trademarks, unless the comparison provides a strong legal argument which is in your favour 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 in considering whether the goods and services in question are identical, similar or complementary. Keep in mind that goods and services may be similar or complementary as well as goods or services belonging to different classes. See our availability sheet 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 merely state that goods or services are similar or complementary without explaining why, you risk that the decision will be rendered without taking into account these goods or services, which will then remain in the wording of the opposing mark.

What is the cost of an opposition?

The cost of an opposition in France is €325. At the European level, it is €350. It varies for other countries in the world.

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 proceedings, but only if the winner claims it. This sum includes the reimbursement of the opposition fee (350€) as well as 300€ for miscellaneous costs incurred by the winner. No proof of these expenses 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 more in the form of an opposition, since the deadline has passed. You can, however, bring an action for nullity for infringement of your prior rights:

  • In France, before the High Court
  • In the European Union, in front of EUIPO

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