How to file an opposition against a trademark application?

Filing an opposition against a trademark application allows you to block registration already at the stage of the registration procedure. Opposition is one of the basic tools for enforcing trademark rights. However, in order to use it, action must be taken within a specific time limit.

What is an opposition?

An opposition to a trademark application is a formal notice filed with the office where the infringing application was filed. The opposition is based on an earlier right.

If you want to block registration of a mark before the Polish Patent Office (UPRP), the notice must be filed with UPRP. In the case of a European Union trade mark, the opposition must be filed with the European Union Intellectual Property Office (EUIPO).

In the notice of opposition, the owner of the earlier mark indicates the legal and factual grounds and explains why the Office should refuse registration of the contested mark.

If, after examination of the case, the opposition is upheld, the application will be refused (in whole or in part) and the mark will not be registered.

Neither the Polish Patent Office nor EUIPO will refuse registration of an identical or very similar mark to yours on their own initiative based on earlier rights. Such a refusal will not be issued unless the interested party takes action, such as filing an opposition.

When can you file an opposition to a trade mark?

An opposition against a trademark application can be filed only within the opposition period defined by law.

For Polish and EU trademarks, the opposition period is three months and starts from the date of publication of the application for opposition purposes. In the case of applications before UPRP, the three-month period is calculated from the date of publication in the Official Bulletin of the Polish Patent Office.

Meeting the deadline is crucial. An opposition filed after the expiry of the time limit will not be examined. If you are aware that a conflicting mark has been filed, it is necessary to monitor the progress of the application in order not to miss the publication date.

Where can you find information about the opposition deadline?

Information about publication for opposition purposes and the start of the opposition period is published in the relevant official bulletins. It can also be monitored by checking the mark on the website of the competent office – the information is usually available in the file details.

By entering the application number or the name of the mark in the Office’s search engine, you can verify the status of the application and the relevant deadlines.

Monitoring such applications is the responsibility of the rights holder. You can also use watching systems and professional monitoring services to check whether third parties are trying to register identical or similar marks.

How to prepare an effective opposition?

An opposition to a trade mark application may be filed by the owner of the earlier right or their representative. You cannot rely on an earlier mark that does not belong to you – for example, you cannot oppose registration based on a competitor’s earlier mark.

The process of preparing and filing an opposition includes several important stages:

• verification and selection of legal grounds, which means a detailed analysis of earlier rights, the factual situation and the grounds provided for in the applicable law or regulation; the basis for opposition may be for e.g. an earlier trade mark
• definition of the scope of the opposition, meaning whether the opposition is filed against all goods and services covered by the contested application, or only certain goods or services
• preparation of arguments and evidence. It is important to refer to the relevant principles of assessment applied by UPRP or EUIPO and to case-law that supports your position. In some cases, it may be necessary to submit evidence, for example to confirm the reputation or enhanced distinctiveness of the earlier trade mark
• filing the opposition within the time limit – monitoring the deadline and preparing the opposition in time is essential
• supervising the course of the proceedings and responding to communications from the Office.

Consequences of missing the opposition deadline

If an opposition is filed after the deadline, it will not be taken into account and the contested mark may proceed to registration. This may result in the applicant using the problematic mark without restriction, which can reduce the value of the earlier mark and have a direct impact on brand recognition and reputation.

However, if valid grounds for opposition existed, the registration can still be challenged by filing an application for a cancellation of the trade mark. In invalidity proceedings, you may rely on an earlier identical or confusingly similar mark registered for similar goods or services as a ground for invalidation. Therefore, an invalidity action may be an effective solution, for example, where the opposition deadline was missed.

What documents are required to file an opposition?

In an opposition to a trade mark application, you must indicate the details of the opponent and clearly identify the contested application – including its application number, the sign and the applicant’s details. If you wish to challenge more than one application, a separate opposition must be filed against each application.

The notice of opposition must specify the legal ground relied upon – that is, the relevant provision of the applicable act or regulation. The grounds differ depending on whether you rely on identity of marks and goods, likelihood of confusion, or reputation of the earlier trade mark.

You must also indicate and document the earlier right relied upon, for example the registration of the earlier trade mark forming the basis of the opposition. In proceedings before the Polish Patent Office, a copy of the registration certificate should be attached, and the registration number and details should be indicated in the notice.

It is necessary to define the scope of the opposition – whether it is directed against the entire application (all classes and goods or services) or only part of it. If the opposition concerns only certain goods or services, they must be clearly specified.

The opposition should include reasoning explaining why the relevant legal grounds apply in this case. It is advisable to present arguments supported by case-law and established assessment principles.

An official fee must be paid when filing the opposition. If the fee is not paid, the opposition will not be examined. It is recommended to attach proof of payment.

If the opposition is filed by a representative, such as a patent and trademark attorney, they will take care of all formal requirements, deadlines and preparation of documents, including the power of attorney.

A representative will also assist in preparing the reasoning, which is sometimes treated superficially by opponents. Apart from meeting formal requirements and deadlines, the reasoning (observations) is the most important part of the opposition, as it often determines whether you will successfully demonstrate that registration of the contested mark should be refused.