EU Trademark Opposition: Timeline, Costs, and How to Respond

EU Trademark Opposition: Timeline, Costs, and How to Respond

After a European Union Trade Mark (EUTM) application passes EUIPO's examination and is published in the EU Trade Marks Bulletin, it enters a 3-month opposition period under Article 46 of the EU Trade Mark Regulation (EU 2017/1001). During this window, any person or entity with earlier rights can file a formal opposition to prevent the mark from being registered.

Understanding the opposition process — whether you are filing one or defending against one — is critical for protecting your brand investment in Europe.

Pro tip: Before filing your EUTM, run a free trademark check to identify marks that could oppose your application. Knowing the landscape in advance helps you make strategic filing decisions.

Who Can File an Opposition?

Under Article 46 EUTMR, oppositions can be filed by:

• Owners of earlier EUTMs — registered or pending applications with an earlier filing date
• Owners of earlier national marks — marks registered in any EU member state
• Owners of earlier international registrations — Madrid Protocol designations covering the EU or individual member states
• Licensees — authorised by the trade mark owner to file on their behalf
• Owners of well-known marks — marks recognised as well-known under Article 6bis of the Paris Convention, even if unregistered

The Opposition Timeline

The entire opposition process, from filing to decision, can take 12–24 months depending on complexity, extensions, and whether proof of use is requested.

Grounds for Opposition (Article 8 EUTMR)

Article 8(1)(a) — Double Identity

The opposed mark is identical to an earlier mark for identical goods or services. This is the strongest ground — no likelihood of confusion analysis is needed.

Article 8(1)(b) — Likelihood of Confusion

The opposed mark is identical or similar to an earlier mark for identical or similar goods or services, and there exists a likelihood of confusion on the part of the relevant public. This is the most commonly invoked ground.

EUIPO assesses likelihood of confusion through a global assessment considering:

• Visual, phonetic, and conceptual similarity of the marks
• Similarity of the goods and services (Nice Classification comparison)
• Distinctive character of the earlier mark (inherent or acquired)
• Relevant public's level of attention

Article 8(4) — Non-Registered Marks and Signs Used in Commerce

Earlier unregistered marks or signs used in the course of trade of more than mere local significance. The opponent must prove that the sign gives them the right to prohibit use of the later mark under the national law of the relevant member state.

Article 8(5) — Reputation

The earlier mark has a reputation in the EU (for EUTMs) or in the member state where it is registered (for national marks), and use of the opposed mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. No similarity of goods/services is required — this protects famous marks against dilution.

The GTC advantage: Whether you are filing or defending an opposition, our trademark opposition service provides strategic guidance and professional representation before EUIPO throughout the entire proceedings.

Filing an Opposition: Step by Step

Step 1: File the Notice of Opposition

Submit EUIPO Form of Opposition within the 3-month window. The notice must include:

• Identification of the opposed EUTM application
• The earlier mark(s) relied upon
• The grounds for opposition (Article 8 provisions)
• The goods and services against which opposition is directed

Step 2: Pay the Opposition Fee

The opposition fee is EUR 320. This must be paid within the 3-month opposition period — failure to pay means the opposition is deemed not filed.

Step 3: Cooling-Off Period

After the opposition is filed, EUIPO notifies both parties and opens a 2-month cooling-off period. This period can be extended — up to a total of 24 months — by joint request. The purpose is to allow the parties to negotiate a settlement without incurring further costs.

Many oppositions are resolved during cooling-off through:

• Coexistence agreements — both marks proceed with restrictions
• Voluntary withdrawal — the applicant withdraws the application
• Narrowing specifications — the applicant limits goods/services to remove overlap

Step 4: Adversarial Phase

If the cooling-off period expires without resolution, the adversarial phase begins. The opponent must submit evidence and arguments supporting the opposition. The applicant then has the opportunity to respond.

Step 5: Proof of Genuine Use

If the earlier mark has been registered for more than 5 years, the applicant can request that the opponent prove genuine use of the earlier mark in the EU for the goods/services relied upon. If the opponent cannot prove use, the opposition fails for those goods/services.

Defending Against an Opposition

If your EUTM application is opposed, you have several defence strategies:

1. Challenge the Similarity Assessment

Argue that the marks are not sufficiently similar visually, phonetically, or conceptually to create a likelihood of confusion.

2. Argue Goods/Services Dissimilarity

Demonstrate that the goods and services are in different Nice classes or different market sectors, reducing the likelihood of confusion.

3. Request Proof of Use

If the opponent's mark has been registered for more than 5 years, request proof of genuine use. The opponent must demonstrate real commercial use in the EU — token use or use in only a small part of the EU may be insufficient.

4. Argue Coexistence

If both marks have coexisted in the marketplace without confusion, this can undermine the opponent's likelihood of confusion argument.

5. Negotiate a Settlement

Often the most practical approach. A coexistence agreement, territorial limitation, or specification narrowing can resolve the dispute without a formal decision.

Opposition Costs

EUIPO's cost awards are modest — they rarely cover actual professional fees. This means each party typically bears their own costs regardless of outcome.

Possible Outcomes

1. Opposition upheld — the EUTM application is refused (in whole or in part)
2. Opposition rejected — the EUTM application proceeds to registration
3. Partial decision — the application is refused for some goods/services and proceeds for others
4. Settlement — the parties reach an agreement, and the opposition is withdrawn

Appeal

Either party can appeal an opposition decision to EUIPO's Board of Appeal within 2 months. The appeal fee is EUR 720. Board of Appeal decisions can be further appealed to the General Court of the European Union.

Strategic Considerations

• Monitor the EU Trade Marks Bulletin — set up trademark monitoring to catch conflicting applications early
• File during the cooling-off period — most settlements happen here, saving time and money
• Consider the strength of the earlier mark — highly distinctive or well-known marks have stronger opposition prospects
• Evaluate the commercial impact — sometimes coexistence is preferable to costly litigation
• Act quickly — the 3-month opposition window is strict and cannot be extended

Ready to File or Defend an EU Trademark Opposition?

Whether you need to challenge a conflicting application or defend your own EUTM against opposition, professional guidance through EUIPO proceedings is essential for a successful outcome.

Start with a free trademark check to understand the competitive landscape, or contact our trademark opposition team for expert representation before EUIPO.