About opposition procedure in the European Union

According to the legislation of the European Union the examination of the applied trademark is conducted based on absolute grounds only. By the results of such examination and since the marks are not checked for relative grounds (confusing similarity with the trademarks for homogeneous goods/services of the third party), the details of the marks are published in the Trademark Bulletin of the European Union for the purpose of filing the oppositions by the third parties within the prescribed term.

In fact, the single mechanism to prevent registration of similar/identical marks in the European Union does not exist. That's why if you have the mark registered in any country of the European Union or directly in the European Union Intellectual Property Office (EUIPO), it is recommendable to make constant monitoring of the Trademark Bulletins in order to prevent registration of the similar/identical marks in respect of the similar/identical goods/services.

Alongside with this, pursuant to the current practice in some cases the EUIPO sends the Notifications to the owners of the earlier registered marks informing about filing the confusingly similar/identical marks which undergo the opposition period. However, the EUIPO does not analyze homogeneity of the lists of the goods/services, which can only be determined within consideration of oppositions by the Appeal Board of the EUIPO. Thus, such a Notification requires additional analysis and cannot be considered as the grounds for filing an opposition. Moreover, such a Notification does not guarantee the absence of other confusingly similar/identical trademarks applied for homogeneous/identical goods/services, due to which it is desirable to conduct regular monitoring of the Official Bulletins.

Hence, in case of detection of similar marks, it is possible to undertake appropriate actions, namely to file an opposition. Alongside with this, taking into account the peculiarities of the opposition procedure in the European Union, in order to settle the potential dispute amicably, it is possible to send the warning letter to the owner of the applied mark demanding to limit the list of goods/services or withdraw the application.

If no actions are taken on preventing the registration of similar trademarks, such designations will be further used in the civil circulation that first of all will lead to misleading the consumers and obtaining the illegal benefit by their owners, and, consequently, will damage the rightholder. Also if your mark is original enough, the registration and use of the similar/identical marks by the third parties may result in a brand blur.