Notice of opposition
1. A notice of opposition may be entered on the basis of one or more earlier marks or other rights within the meaning of Article 8 of Regulation (EU) 2017/1001, provided that the proprietors or authorised persons entering the notice pursuant to Article 46 of Regulation (EU) 2017/1001 are entitled to do so for all the earlier marks or rights. Where an earlier mark has more than one proprietor (‘co-ownership’) or where an earlier right may be exercised by more than one person, an opposition pursuant to Article 46 of Regulation (EU) 2017/1001 may be filed by any or all of the proprietors or authorised persons.
2. The notice of opposition shall contain:
(a)
the file number of the application against which opposition is entered and the name of the applicant for the EU trade mark;
(b)
a clear identification of the earlier mark or right on which the opposition is based, namely:
(i)
where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) of Regulation (EU) 2017/1001, the file number or registration number of the earlier mark, an indication of whether the earlier mark is registered or an application for registration of that mark, as well as an indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is an EU trade mark;
(ii)
where the opposition is based on a well-known mark within the meaning of Article 8(2)(c) of Regulation (EU) 2017/1001, the indication of the Member State(s) where the mark is well known and a representation of the mark;
(iii)
where the opposition is based on the absence of the proprietor's consent as referred to in Article 8(3) of Regulation (EU) 2017/1001, an indication of the territory in which the earlier trade mark is protected, the representation of the mark and, if applicable, an indication whether the earlier mark is an application or a registration, in which case the filing or registration number shall be provided;
(iv)
where the opposition is based on an earlier mark or another sign within the meaning of Article 8(4) of Regulation (EU) 2017/1001, an indication of its kind or nature, a representation of the earlier mark or sign, and an indication of whether the right to the earlier mark or sign exists in the whole Union or in one or more Member States, and if so, an indication of those Member States;
(v)
where the opposition is based on an earlier designation of origin or geographical indication within the meaning of Article 8(6) of Regulation (EU) 2017/1001, an indication of its nature, a representation of the earlier designation of origin or geographical indication, and an indication of whether it is protected in the whole Union or in one or more Member States, and if so, an indication of those Member States;
(c)
the grounds on which the opposition is based by means of a statement to the effect that the requirements under Article 8(1), (3), (4), (5) or (6) of Regulation (EU) 2017/1001 in respect of each of the earlier marks or rights invoked by the opposing party are fulfilled;
(d)
in the case of an earlier trade mark application or registration, the filing date and, where available, the registration date and the priority date of the earlier mark;
(e)
in the case of earlier rights pursuant to Article 8(6) of Regulation (EU) 2017/1001, the date of application for registration or, if that date is not available, the date from which protection is granted;
(f)
in the case of an earlier trade mark application or registration, a representation of the earlier mark as registered or applied for; if the earlier mark is in colour, the representation shall be in colour;
(g)
an indication of the goods or services on which each of the grounds of the opposition is based;
(h)
as concerns the opposing party:
(i)
the identification of the opposing party in accordance with Article 2(1)(b) of Implementing Regulation (EU) 2018/626 ( 10 ) ;
(ii)
where the opposing party has appointed a representative, or where representation is mandatory pursuant to Article 119(2) of Regulation (EU) 2017/1001, the name and business address of the representative in accordance with Article 2(1)(e) of Implementing Regulation (EU) 2018/626;
(iii)
where the opposition is entered by a licensee or by a person who is entitled under the relevant Union legislation or national law to exercise an earlier right, a statement to that effect and indications concerning the authorisation or the entitlement to file the opposition;
(i)
an indication of the goods or services against which the opposition is directed; in the absence of such an indication, the opposition shall be considered to be directed against all of the goods or services of the opposed EU trade mark application.
3. Where the opposition is based on more than one earlier mark or earlier right, paragraph 2 shall apply for each of those marks, signs, designations of origin or geographical indications.
4. The notice of opposition may also contain a reasoned statement on the grounds, the facts and arguments on which the opposition relies, and supporting evidence.
Use of languages in opposition proceedings
The opposing party or the applicant may, before the date on which the adversarial part of the opposition proceedings is deemed to commence pursuant to Article 6(1), inform the Office that the applicant and the opposing party have agreed on a different language for the opposition proceedings pursuant to Article 146(8) of Regulation (EU) 2017/1001. Where the notice of opposition has not been filed in that language, the applicant may request that the opposing party file a translation in that language. Such a request must be received by the Office not later than the date on which the adversarial part of the opposition proceedings is deemed to commence. The Office shall specify a time limit for the opposing party to file a translation. Where that translation is not filed or filed late, the language of the proceedings as determined in accordance with Article 146 of Regulation (EU) 2017/1001 (‘language of proceedings’) shall remain unchanged.
Information to the parties to opposition proceedings
The notice of opposition and any document submitted by the opposing party, as well as any communication addressed to one of the parties by the Office prior to the finding on admissibility shall be sent by the Office to the other party for purposes of informing of the introduction of an opposition.
Admissibility of the opposition
1. Where the opposition fee has not been paid within the opposition period laid down in Article 46(1) of Regulation (EU) 2017/1001, the opposition shall be deemed not to have been entered. Where the opposition fee has been paid after the expiry of the opposition period, it shall be refunded to the opposing party.
2. Where the notice of opposition has been filed after the expiry of the opposition period, the Office shall reject the opposition as inadmissible.
3. Where the notice of opposition has been filed in a language which is not one of the languages of the Office as required under Article 146(5) of Regulation (EU) 2017/1001, or where it does not comply with Article 2(2)(a), (b) or (c) of this Regulation, and where those deficiencies have not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.
4. Where the opposing party does not submit a translation as required under Article 146(7) of Regulation (EU) 2017/1001, the opposition shall be rejected as inadmissible. Where the opposing party submits an incomplete translation, the part of the notice of opposition that has not been translated shall not be taken into account in the examination of admissibility.
5. Where the notice of opposition does not comply with the provisions of Article 2(2)(d) to (h), the Office shall inform the opposing party accordingly and shall invite it to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, the Office shall reject the opposition as inadmissible.
6. The Office shall notify the applicant of any finding pursuant to paragraph 1 that the notice of opposition is deemed not to have been entered and of any decision to reject the opposition on the grounds of inadmissibility under paragraphs 2, 3, 4 or 5. Where an opposition is rejected in its entirety as inadmissible pursuant to paragraphs 2, 3, 4 or 5, prior to the notification of Article 6(1), no decision on costs shall be taken.
Commencement of the adversarial part of the opposition proceedings and prior closure of the proceedings
1. Where the opposition is found admissible pursuant to Article 5, the Office shall send a communication to the parties informing them that the adversarial part of the opposition proceedings shall be deemed to commence two months after receipt of the communication. That period may be extended to a total of 24 months if both parties request an extension before the two-month period expires.
2. Where, within the period referred to in paragraph 1, the application is withdrawn or restricted to goods or services against which the opposition is not directed, or the Office is informed about a settlement between the parties, or the application is rejected in parallel proceedings, the opposition proceedings shall be closed.
3. Where, within the period referred to in paragraph 1, the applicant restricts the application by deleting some of the goods or services against which the opposition is directed, the Office shall invite the opposing party to state, within such a period as it may specify, whether it maintains the opposition, and if so, against which of the remaining goods or services. Where the opposing party withdraws the opposition in light of the restriction, the opposition proceedings shall be closed.
4. Where, before the expiry of the period referred to in paragraph 1, the opposition proceedings are closed pursuant to paragraphs 2 or 3, no decision on costs shall be taken.
5. Where, before the expiry of the period referred to in paragraph 1, the opposition proceedings are closed following a withdrawal or restriction of the application pursuant to paragraph 2 or following a withdrawal of the opposition pursuant to paragraph 3, the opposition fee shall be refunded.
Substantiation of the opposition
1. The Office shall give the opposing party the opportunity to submit the facts, evidence and arguments in support of the opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Article 2(4). For that purpose, the Office shall specify a time limit which shall be at least two months, starting on the date on which the adversarial part of the opposition proceedings is deemed to commence in accordance with Article 6(1).
2. Within the period referred to in paragraph 1, the opposing party shall also file evidence of the existence, validity and scope of protection of its earlier mark or right, as well as evidence proving its entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:
(a)
where the opposition is based on an earlier trade mark within the meaning of Article 8(2)(a) and (b) of Regulation (EU) 2017/1001, which is not an EU trade mark, evidence of its filing or registration, by submitting:
(i)
a copy of the relevant filing certificate or an equivalent document from the administration with which the trade mark application was filed, if the trade mark is not yet registered; or
(ii)
where the earlier trade mark is registered, a copy of the relevant registration certificate and, if applicable, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 or any extension thereof, or equivalent documents from the administration by which the trade mark was registered;
(b)
where the opposition is based on a well-known mark within the meaning of Article 8(2)(c) of Regulation (EU) 2017/1001, evidence showing that that mark is well known in the relevant territory for the goods or services indicated in accordance with Article 2(2)(g) of this Regulation;
(c)
where the opposition is based on the absence of the proprietor's consent as referred to in Article 8(3) of Regulation (EU) 2017/1001, evidence of the opposing party's proprietorship of the prior trade mark and of its relationship with the agent or representative;
(d)
where the opposition is based on an earlier right within the meaning of Article 8(4) of Regulation (EU) 2017/1001, evidence showing use of that right in the course of trade of more than mere local significance, as well as evidence of its acquisition, continued existence and scope of protection including, where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence;
(e)
where the opposition is based on an earlier designation of origin or geographical indication within the meaning of Article 8(6) of Regulation (EU) 2017/1001, evidence of its acquisition, continued existence and scope of protection including, where the earlier designation of origin or geographical indication is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence;
(f)
if the opposition is based on a mark with a reputation within the meaning of Article 8(5) of Regulation (EU) 2017/1001, in addition to the evidence referred to in point (a) of this paragraph, evidence showing that the mark has a reputation in the Union or in the Member State concerned for the goods or services indicated in accordance with Article 2(2)(g) of this Regulation, as well as evidence or arguments showing that use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
3. Where the evidence concerning the filing or registration of the earlier rights referred to in paragraph 2(a) or, where applicable, paragraph 2(d) or (e), or the evidence concerning the content of the relevant national law, is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source.
4. Any filing, registration or renewal certificates or equivalent documents referred to in paragraph 2(a), (d) or (e), as well as any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in paragraph 2(d) and (e), including evidence accessible online as referred to in paragraph 3, shall be in the language of the proceedings or shall be accompanied by a translation into that language. The translation shall be submitted by the opposing party of its own motion within the time limit specified for submitting the original document. Any other evidence submitted by the opposing party to substantiate the opposition shall be subject to Article 24 of Implementing Regulation (EU) 2018/626. Translations submitted after the expiry of the relevant time limits shall not be taken into account.
5. The Office shall not take into account written submissions, or parts thereof, which have not been submitted in or not been translated into the language of the proceedings within the time limit set by the Office in accordance with paragraph 1.
Examination of the opposition
1. Where, until the expiry of the period referred to in Article 7(1), the opposing party has not provided any evidence, or where the evidence provided is manifestly irrelevant or manifestly insufficient to meet the requirements laid down in Article 7(2) for any of the earlier rights, the opposition shall be rejected as unfounded.
2. Where the opposition is not rejected pursuant to paragraph 1, the Office shall communicate the submission of the opposing party to the applicant and shall invite it to file its observations within a period specified by the Office.
3. Where the applicant submits no observations, the Office shall base its ruling on the opposition on the evidence before it.
4. The observations submitted by the applicant shall be communicated to the opposing party who shall be invited, if the Office considers it necessary, to reply within a period specified by the Office.
5. Where, after the expiry of the period referred to in Article 7(1), the opposing party submits facts or evidence that supplement relevant facts or evidence provided within that period and that relate to the same requirement laid down in Article 7(2), the Office shall exercise its discretion under Article 95(2) of Regulation (EU) 2017/1001 in deciding whether to accept these supplementing facts or evidence. For that purpose, the Office shall take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.
6. The Office shall invite the applicant to submit further observations in response if it deems it appropriate under the circumstances.
7. Where the opposition has not been rejected pursuant to paragraph 1 and the evidence submitted by the opposing party is not sufficient to substantiate the opposition in accordance with Article 7 for any of the earlier rights, the opposition shall be rejected as unfounded.
8. Article 6(2) and (3) shall apply mutatis mutandis after the date on which the adversarial part of the opposition proceedings is deemed to commence. Where the applicant wishes to withdraw or restrict the contested application, it shall do so by way of a separate document.
9. In appropriate cases, the Office may invite the parties to limit their observations to particular issues, in which case it shall allow them to raise the other issues at a later stage of the proceedings. The Office shall not be required to inform a party of the possibility of producing certain relevant facts or evidence which that party previously failed to produce.
Multiple oppositions
1. Where a number of oppositions have been entered in respect of the same application for the registration of an EU trade mark, the Office may examine them in one set of proceedings. The Office may subsequently decide to examine those oppositions separately.
2. Where a preliminary examination of one or more oppositions reveals that the EU trade mark for which an application for registration has been filed may be ineligible for registration in respect of some or all of the goods or services for which registration is sought, the Office may suspend the other opposition proceedings relating to that application. The Office shall inform the opposing parties affected by the suspension of any relevant decisions taken in the context of those proceedings which are ongoing.
3. Once a decision rejecting an application as referred to in paragraph 1 has become final, the oppositions for which proceedings have been suspended in accordance with paragraph 2 shall be deemed to have been disposed of and the opposing parties concerned shall be informed accordingly. Such a disposition shall be considered to constitute a case which has not proceeded to judgment within the meaning of Article 109(5) of Regulation (EU) 2017/1001.
4. The Office shall refund 50 % of the opposition fee paid by each opposing party whose opposition is deemed to have been disposed of in accordance with paragraph 3, provided that the suspension of the proceedings relating to that opposition took place before the commencement of the adversarial part of the proceedings.
Proof of use
1. A request for proof of use of an earlier mark pursuant to Article 47(2) or (3) of Regulation (EU) 2017/1001 shall be admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office pursuant to Article 8(2) of this Regulation.
2. Where the applicant has made a request for proof of use of an earlier mark which complies with the requirements of Article 47(2) or (3) of Regulation (EU) 2017/1001, the Office shall invite the opposing party to provide the proof required within a time limit specified by the Office. Where the opposing party does not provide any evidence or reasons for non-use before the time limit expires or where the evidence or reasons provided are manifestly irrelevant or manifestly insufficient, the Office shall reject the opposition in so far as it is based on that earlier mark.
3. The indications and evidence of use shall establish the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.
4. The evidence referred to in paragraph 3 shall be filed in accordance with Article 55(2) and Articles 63 and 64 and shall be limited to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 97(1)(f) of Regulation (EU) 2017/1001.
5. A request for proof of use may be filed at the same time as observations on the grounds on which the opposition is based. Such observations may also be filed together with the observations in reply to the proof of use.
6. Where the evidence supplied by the opposing party is not in the language of the opposition proceedings, the Office may require the opposing party to submit a translation of that evidence in that language pursuant to Article 24 of Implementing Regulation (EU) 2018/626.
7. Where after the expiry of the time limit referred to in paragraph 2, the opposing party submits indications or evidence that supplement relevant indications or evidence already submitted before expiry of that time limit and relate to the same requirement laid down in paragraph 3, the Office shall exercise its discretion under Article 95(2) of Regulation (EU) 2017/1001 in deciding whether to accept those supplementary indications or evidence. For that purpose, the Office shall take into account, in particular, the stage of proceedings and whether the indications or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the indications or evidence.
Source: EUR-Lex (Publications Office of the EU), © European Union, reuse permitted under Commission Decision 2011/833/EU.
