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CTM opposition

Once registered, the EU trademark has effect in the 28 of the European Union and later in the new Member States.

The opposition proceeding allows, in a single procedure, to prevent a EUTM application from being registered (the applicant can convert his community application into national filings in the countries where no right was opposed).

The time limit

The opposition can be filed within a period of 3 months following the publication of the EUTM application in the EU Trademarks Bulletin.

The opposable rights

The notice of opposition can be based on an application or a registration of a EU or national or international mark having effect in one or several states of the European Union, or on any other earlier rights (as a company name) within the European Union that are not just applicable to particular localities and that can be opposed according to the national law of the state where it has effect.

It is possible to oppose several marks and/or other rights for a single opposition proceeding, providing that these rights are owned by a single titular. It is impossible to oppose rights owned by a third person nor even by a subsidiary company.

The proceeding

Within 3 months following the EU trademark application publication, the notice of opposition has to be filed, containing the following essential elements :

- the application identification,

- the opponent identification,

- the earlier rights identification,

- the grounds upon which the opposition is based (it is sufficient to select the boxes listed in the form, it will be possible to elaborate on these arguments within a period fixed by the EUIPO).

The notice of opposition has to be filed in one of the 2 languages chosen by the applicant and indicated upon publication of the community application.

However, it is allowed to file it in another official language of the EUIPO (English, French, German, Italian and Spanish) and to produce a translation within a period of one month from the expiry of the deadline for filing opposition (this time limit is not notified by the EUIPO).

Following the notification of opposition to the applicant starts the "cooling-off" period. Within an extendable two-month period, the opponent and the applicant may try to reach an agreement without the EUIPO's intervention.

If both parties reach an agreement that puts an end to opposition, neither party will be ordered to pay costs. The opposition fee can also be refund in case of total or partial withdrawal of the community application.

When no agreement is reached, the contradictory proceeding begins.

During the opposition proceeding, the applicant may request use evidences to the opponent, provided that the opposed mark has been registered for more than five years. If a real and genuine use cannot be prooven, the opposition will be rejected or will only continue in relation to the goods and services for which proof has been furnished.

The proceeding costs apportionment is determined by the EUIPO.

The decision of the opposition division may be appealed before one board of appeal of the EUIPO.