Oppositions and Invalidity Actions
During the registration procedure every EUTM application will be published. During 3 months after the publication date third parties will have the opportunity to object to registration of the pending trademark application on the basis of a prior mark. This could be a valid European Union trademark or a national trademark of one of the Member States.
After a formalities check, the opposition procedure always starts with a so-called cooling-off period of 2 months (extendable on the joint request of both parties), during which the parties have the opportunity to negotiate a possible amicable settlement of the opposition.
If the cooling-off period expires without a settlement, the contentious phase of the opposition will start, during which parties have the opportunity to exchange arguments in writing.
After the exchange of arguments, the Opposition Division of EUIPO will take a decision. Due to backlogs this could take considerable time. Nowadays, opposition procedures at EUIPO on average take 1-2 years or longer.
An opposition decision can be appealed at one of EUIPO’s Chambers of Appeal.
In case an EUTM has already been registered, it is possible to start a cancellation or invalidity action at EUIPO for the following reasons:
- The trademark has not been genuinely used during 5 years after the registration date or during a continuous period of 5 years.
- The trademark is not distinctive (descriptive, laudatory or deceptive).
- The trademark infringes a prior trademark registration.