How to oppose the registration of a trademark?
In order to be identified by its customers and to stand out from its competitors, a company must choose and use distinctive signs such as trademarks, trade names, corporate names and domain names.
Third parties may wish to appropriate these distinctive signs, notably by registering a trademark for identical or similar products and services. In such cases, the solution is to file proceedings in opposition to the third party’s trademark registration.
AGN Avocats tells you more about this opposition procedure.
What is the opposition procedure?
Opposition proceedings make it possible to contest the registration of a trademark by invoking anteriority on the distinctive sign it incorporates.
This procedure takes place before the offices with which trademarks are registered, namely the Institut National de la Propriété Intellectuelle (INPI) in the case of French trademarks, or the European Union Intellectual Property Office (EUIPO) in the case of European Union trademarks.
If the opposition is successful, the application for registration of the contested trademark is rejected and deemed never to have existed.
It should be noted that the opposition may concern all the goods and services covered by the trademark application, or just some of them. In this way, the contested trademark can be rejected only partially, i.e. only for the goods and services covered by the opposition, and still be valid for the rest of the goods and services it designates.
What must be proven?
To obtain rejection of the contested trademark, the opposing party must demonstrate that it has valid prior rights to an earlier distinctive sign. Before December 11, 2019, the date of entry into force of the Law of May 22, 2019 on the growth and transformation of businesses, the opponent had to be the owner of an identical or similar trademark. Since that date, the opposing party can rely on other types of anteriority. They can, for example, rely on a company name, a trade name, a domain name or a geographical indication.
The opposing party must demonstrate that he or she was actually using these signs before filing the disputed application, and provide proof of use in the form of extracts from his or her website, commercial brochures or invoices.
In most cases, the opposing party will also have to demonstrate that there is a likelihood of confusion in the mind of the reference public between the contested trademark and the prior mark claimed. This likelihood of confusion results in particular from the distinctive character of the prior sign, its reputation with the public and the degree of similarity between the contested trademark and the prior distinctive sign and the goods and services they designate.
Who can file an opposition?
Opposition must be filed by the owner of the prior mark, whether a natural person or a legal entity, who may however be represented by an agent with specific authority or who is entitled to do so by virtue of his or her profession, as in the case of lawyers.
What is the deadline for filing an opposition?
Opposition must be filed within two months of publication of the contested trademark in the Bulletin Officiel de la Propriété Intellectuelle for French trademarks, and within three months of publication in the Bulletin des Marques de l’Union Européenne for European Union trademarks.
What are the stages in the opposition procedure?
Opposition proceedings are governed by the principle of due process, which means that each party must be able to express its arguments and produce documents in support of its claims. The procedure therefore begins with an investigation phase, initiated by an exchange of written observations between the parties. These written exchanges may be supplemented by a request for a hearing before the office. Once the investigation phase has been completed, the Office examines the file and issues a decision.
How much does the opposition procedure cost?
In addition to legal fees, the opposing party must pay a fee in order to be able to file an opposition with the Office. When the opposition is filed against an individual trademark, online and on the basis of a single anteriority, this fee is 400 euros for opposition proceedings against a French trademark before the INPI and 850 euros for opposition proceedings against a European Union trademark before the EUIPO.
Note that this fee applies to each opposition: if an opponent wishes to contest several trademarks based on the same anteriorities, he or she will have to file as many oppositions as trademarks contested, and pay a fee for each opposition.
Can the opposition fee be refunded?
In the event of proceedings before the EUIPO, the opposition fee will be charged to the losing party, and the point will be decided in the Office’s decision on the opposition. Before the INPI, the fee is not refunded, even if the opposition is declared inadmissible. The choice of this procedure and its management must therefore be carefully considered to avoid unnecessary costs.
How long does the opposition procedure last?
The duration of the opposition procedure depends on the number of submissions exchanged by the parties during the adversarial phase. Generally speaking, opposition proceedings last between 6 and 12 months before the INPI and between 12 and 18 months before the EUIPO.
Our attorneys are at your disposal to answer all your questions and advise you. Our meetings can be held in person or by videoconference. You can make an appointment directly online at www.agn-avocats.com.
AGN AVOCATS – Intellectual property and digital law department
09 72 34 24 72