HOME EXPERTISE DISPUTES Opposition to trademarks

Opposition to a new trademark registration

Following the registration of a German trademark or the publication of a European Union trademark, the owners of earlier property rights have official opposition proceedings at their disposal to prevent the registration of the trademark for all or some of the goods and services claimed.

These proceedings are characterized by comparatively low costs (compared to court proceedings), in particular because there is often no significant risk of having to pay the opposing party's legal fees.

Trademark monitoring

The German Patent and Trade Mark Office (DPMA) and the European Intellectual Property Office (EUIPO) do not check whether older, already existing property rights are infringed when new trade marks are applied for. The offices only check whether so-called absolute grounds for refusal - such as a lack of distinctiveness or a need to keep a mark free due to descriptive content - exist.

It is therefore very important for trademark owners to continuously monitor their property rights in order to be able to react to the registration of identical or similar new trademarks at an early stage.

Opposition before the trademark office

If a trade mark proprietor discovers that a new trade mark that is confusingly similar or even identical to his own trade mark has been entered in the DPMA register (likelihood of confusion), he can file an opposition with the DPMA within three months of publication of the registration.

The assessment of the likelihood of confusion depends, among other things, on how similar the trade marks and the respective goods or services claimed are - the more similar they are, the more clearly the trade marks must differ from each other.

Opposition against EU trademarks

The opposition procedure against EU trademarks (trademarks with protection in all EU member states) takes place before the European Union Intellectual Property Office (EUIPO) and is structured slightly differently. Here, the three-month opposition period begins with the publication of the EU trade mark application, but the basic function is identical to the procedure before the German Patent and Trade Mark Office (DPMA).

Cancellation proceedings as an alternative

After the opposition period has expired, however, a trademark can still be canceled through cancellation proceedings before the Office or an action for cancellation before the courts.

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