Filing the Opposition
An Opposition to a trade mark application is filed at the Community Trade Mark Office (OHIM) on a Notice of Opposition setting out the grounds of opposition.
The Opposition fee must also be paid.
Action by OHIM after receipt of Opposition
Once OHIM receives a Notice of Opposition it forwards it to the opposing party’s representative.
OHIM checks the opposition for formal requirements and notifies the Opponent of the results of the examination.
OHIM’s notification also states the due deadlines for the subsequent stages.
The cooling-off period
The Opposition proceedings start with the so-called cooling-off period which is intended to provide the opportunity for the parties to negotiate an agreement. If the negotiations succeed, each party normally bears its own costs. If the negotiations result in at least a restriction of the goods and services covered in the opposed party’s application, then the Opposition fee will be refunded.
Adversarial part
If no agreement is achieved, the adversarial part of the proceedings begins.
The Opponent has two months to submit arguments and observations in support of his case.
These are forwarded to the applicant, after which the applicant has another two months to prepare and submit his response.
Additional arguments can be requested from both parties if the OHIM considers it necessary.
Suspension of the opposition proceedings
OHIM can decide to suspend an opposition on its own initiative or at the request of both or one of the parties.
If the suspension is requested by both parties, the OHIM will suspend the proceedings even if no reason is given.
If so, the parties may freely determine the length of the suspension.
However, if the requested length is beyond what is reasonable the parties do have to enclose a proper justification.
If the parties do not indicate a specific period, OHIM suspends the proceedings for two months. Parties usually ask for suspension when their trademark registration, on which the opposition is based, is subject to administrative or judicial proceedings which may affect either the registration or the opponent's entitlement to the trademark.
The OHIM will make its decision only after the all the relevant circumstances are taken into account.
Proof of use of the mark
When a trade mark is older than five years, the applicant may be requested to prove its use. In such event the applicant has two months to provide adequate evidence of the use. However, it is sufficient if we manage to prove the use in is demonstrated in only one country within the EU.
Reimbursement of costs from the other party
When OHIM makes its decision it also rules on costs.
If the Opponent has been successful, he can claim his costs but the maximum amount of the reimbursement is EUR 650.
If the Applicant is the winning party, he can also apply for reimbursement for his costs but such reimbursement may not exceed the amount of EUR 300.
Requirements for success in an Opposition?
Success in an Opposition depends on the similarity on the one hand between the two marks and on the other hand between the related goods and services.
The OHIM Examiner will focus more than anything else on the target audience of the products in opposition.
He may take many factors influencing the target audience into account.
In fact, every product has particular features which influence the consumer’s degree of attention when purchasing.
One such feature is price: the more a product costs, the more attention you pay in choosing the best option when shopping.
To prove that the goods and services are similar, three factors are regarded as particularly important: first, the nature and purpose of the product; secondly, the method of use; and, thirdly, the channels of distribution.
All these three factors have to be examined in relation to the target audience.
Similarity between marks
Since an average consumer perceives a mark as a whole without making any kind of in-depth analysis, the comparison usually focuses on the overall impression of the marks.
According to prevailing practices the overall impression consists of the visual, aural and conceptual features of a mark and consequently, these factors are scrutinized during the process.
Sometimes however, it is not necessary to prove similarity in all of them.
For instance in the case where the goods or services in question are offered or ordered orally, the resemblance of merely the aural characteristics suffices to establish similarity and or likelihood of confusion.
In situations when the mark contains foreign words and the targeted audience is in general unfamiliar with the applied foreign language, it can be argued that the consumers would pronounce the word in accordance with the phonetic rules of their own language.
Therefore, when a significant part of the target audience pronounces the foreign word correctly, but another significant part of the relevant public applies the rules of their own mother tongue both ways of pronunciation have to be taken into account. In our point of view, the phonetic similarity of the signs can be justified in both ways.
When the mark contains both a word(s) and picture or logo elements, it can be argued that the consumer usually focuses on the word component rather than on the figurative part.