When you would like to oppose a mark…
Having a trademark is not like lying back in the armchair. It is of the applicant’s interest to protect his or her mark, because neither any of the national trademark offices nor the OHIM will do that for them. Therefore, when owning one or more trademarks, one has to pay close attention to managing his or her portfolio effectively. It might sound strange but ownership over a trademark does not mean that the offices would not proceed with the registration of similar or even identical marks. The OHIM does not make any examination in this regard. Therefore, it is always the applicant’s task to examine whether someone files registration of similar marks, and whether this CTM application is dangerous to his or her rights.
How can I know if someone wants to get similar marks registered?
One of your tasks as a CTM owner is the monitoring of the later applications whether any of those is similar to your earlier trademark.
How can I monitor the applications filed later?
Monitoring is not easy and therefore usually requires professional expertise. Nevertheless, in order to conduct a search of your own, you can use the so-called Trademark Watching service with which you can check whether anyone tries to register marks similar to yours and, naturally, you may also check the database or trademark bulletin of the OHIM. TRADEMARK.EU is ready to organize you the watching.
What should I do if I find out that someone filed a similar mark?
The first thing to do is to think about what you would like to achieve. Why is your mark so important for you? Do you use your mark in all the classes indicated in your application? Which are the most important goods and services you would like to cover with your mark?
You need to come up with proper answers to the above questions to see your options. When your options are clear, it becomes easier to build up an effective and successful strategy by which you can protect your mark. Nevertheless, as trademark protection is such a specific area in the world of law, it is always suggested to contact a professional. Note, that you are always invited to contact the trademark attorneys of TRADEMARK.EU.
In case you find a trademark which bears resemblance to your mark and was filed after the priority date of your own, you may hand in an opposition. The period of three months is granted from the dangerous mark’s date of application to file your opposition.
In case the date of application is expressed in months, the time limit shall expire in the relevant subsequent month and on the same day on which the event in question had occurred. That is, for example if an application gets published on May 1 one may file opposition against such application till August 1. For more information please check out the OHIM guidelines, as these are most authentic sources of trademark matters.
Do I need professional representation to file an opposition?
Yes, if you reside outside the EU. Non-EU citizens are obliged to authorize a local professional representative who will be able to handle their case before the OHIM. If you are a European resident, you are not bound to have professional representation, though you are also recommended to do so by the OHIM.
Can I authorize TRADEMARK.EU to represent me in opposition proceedings?
Yes. Lawyers at TRADEMARK.EU specialized both in CTM matters and in opposition proceedings. We are committed to represent our clients with the highest level of professionalism.
What is our role in winning your opposition?
Well, we stand by our clients from the very first moment until the proceeding is over, and of course, if he wishes even after that. This means that, among others, we prepare all the necessary documents and submissions, take care of keeping the deadlines and most importantly try to reach the most favourable economic outcome for the client. Sometimes negotiation is enough; sometimes we must go forward and file an opposition. Whatever the strategy is, we stand firmly by our clients.
How long does an opposition proceeding last?
The average length of an opposition proceeding is six month.
How can I file an opposition?
Again, since drafting a successful opposition is not easy and needs professional expertise, we recommend you to hire professionals who would do the job for you. An opposition has to be filed on a standard form in any official language of the European Union, however, the substantive part of the opposition (e.g. the argumentations) can be submitted only in the language of the opposed application, that is one of the working languages of the OHIM (e.g. English, Spanish, German). It is also worth noting that in most of the cases the opponents file their oppositions in English. At TRADEMARK.EU we handle English oppositions only.
What elements should the opposition contain?
It is important to identify the core facts in an opposition, such as the grounds for the opposition, the details of our trademark, etc. At the very early stage of the proceeding it is not necessary to submit the detailed reasoning and the translations of the evidences. However, we can speed up the procedure in case we submit a full opposition and quite frankly, clients usually like to see results as early as possible.
Is there any fee to be paid when filing an opposition?
Yes. The official fee of an opposition is 350 EUR. If you decide to choose a legal representative, you will also have to pay an additional service fee which can vary a great deal. For your kind information, our basic service fee is very favourable, being only 295 EUR.
After an opposition is filed, the initiating party often has to hand in a detailed argumentation or a reply to the counter party. Our professional attorneys can help you in any kind of oppositional matter for 180 €/hour.
Note, that paying the opposition fee also requires due care as the OHIM expects it within the opposition period. If for some reason the opponent is not able to keep the deadline he might be excused for the delay – in case he can prove that the payment was effected within the last ten days of the opposition period. In such event he must pay a 35 € surcharge within a month, which is 10% of the 350 € opposition fee. Note that in OHIM proceedings the date of the money receipt is the decisive force.
What happens after the OHIM receives an opposition?
Once the Office receives a notice of opposition it forwards it to the opposing party’s representative. The OHIM checks the opposition for formal requirements and notifies the involved party of the results of the examination. The Office’s notification involves the due deadlines of the legal process as well.
What happens then?
Then begins the actual opposition proceeding. It starts with the so-called cooling-off period.
What is the cooling-off period?
The cooling-off period is intended to provide the opportunity to negotiate an agreement with the counter party. Typically, the parties try to reach settlement during this period. If the negotiations succeed, each party ought to bear the cost of his own representation. During negotiations we usually manage to restrict the goods and services covered in the opposed party’s application. If so, you as our client can withdraw your opposition, in which case the official fee is refunded to you. TRADEMARK.EU has considerable experience in drafting such agreements.
For beginners, we advise to use clear and unconditional expressions when composing an agreement. Conditionality such as “if it is necessary” or “if the examiner finds it necessary” will not suffice. If more oppositions are submitted against one particular application which gets rejected based on the first opposition, fifty percent of the official fee shall be refunded to the latter opponents.
What happens if we cannot reach an agreement within the cooling-off period?
In case no agreement is achieved, then begins the adversarial part of the proceeding. In this part of the process the we are granted two months to submit our arguments and observations. Once we submit them, they will be 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 deems it necessary.
Is it possible to request the suspension of the opposition proceeding?
Yes, suspension of the proceeding is a possible outcome. The 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 being reasonable the parties do have to enclose a proper justification. If the parties do not indicate a specific period, the 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.
Does the applicant have to prove that he actually use his mark?
Yes. When a trademark 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 only one country.
Is it possible to claim reimbursement of my costs from the other party?
Yes. When the OHIM makes its decision it also rules over the justified costs. When you as an opponent are the winning party, you can claim your costs. However, 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.
What needs to be proven in order to succeed with my opposition?
In an opposition proceeding we intend to prove the similarity on the one hand between the two marks and on the other hand between the related goods and services.
How can similarity between goods and services be proven?
Well, before getting into the details it is important to note that during the examination process the examiner focuses more than anything on the target audience of the products in opposition.
Therefore the examiner 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 for choosing the best option when shopping. However, many – including us – would argue that even in the case of low-cost products, consumers compare and contrast to finally make the best choice possible.
When we try to prove that the goods and services are similar, three factors are taken into account more importantly: firstly, 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.
As each case is specific in a sense, the examination always needs to be thorough and cannot be conducted as a routine. In some cases complications may occur, e.g. when the implied classes overlap. This can easily happen in the case of twin classes such as classes 18 and 25, which are materials used both for clothes and accessories. Pintz & Partners always checks not only twin classes but also the goods and services that may be considered to be even close to our client’s products.
How can similarity between two marks be proven?
First of all, the signs must always be examined in the form they enjoy protection. 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.
When we, Georg Pintz & Partners represent our clients we usually examine all these aspects. Sometimes however, it is not necessary to prove similarity in all of them. For instance in case the goods and services in question are offered or ordered orally, the resemblance of merely the aural characteristics suffices to establish similarity and or likelihood of confusion. Therefore, in cases where the resemblance of only one aspect is confirmed there is no need for further examination.
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.
Verbal marks are frequently called as “catch phrases.” When a conflict evolves over verbal marks, we argue that it is generally the first part that primarily catches the consumer’s attention. However, as the overall impression cannot be neglected we also examine the structure and the sequence of the syllables constituting the catch phrase. We can still argue for resemblance in case the words begin differently but the overall impression is close or similar.
When the mark contains both literal and figurative elements, the employed approach requires more complexity. For instance, in such cases it can be reasonably argued that the consumer usually focuses on the literal component rather than on the figurative part. The reason is simple: when consumers make a discussion about marks they usually refer to the literal elements and rarely to the figurative parts. On the other hand, similarity cannot be established when only the figurative components of the marks bear resemblance to one another, especially when at least one of the signs contains a further word component.
Trademark is the very symbol of the values your firm represent and therefore can be called the essence of your products and services. This is why it is so important to protect it from the unauthorized use of other economic actors whether they act in good or bad faith. The assessment of trademark similarity requires a high level of expertise and professionalism and therefore it is strongly advised to hire a qualified and experienced attorney who can protect your mark. Attorneys at Pintz & Partners always stand at your disposal.
How can I contact TRADEMARK.EU?
You don’t have to do anything special. Fill out and send us the form you can find at TRADEMARK.EU. Payment is comfortable, as you can decide whether you pay with bank card or via bank transfer.