What is a Trademark Opposition?

In discussing how a trademark opposition works, it is helpful to go over the basics of what a trademark opposition is and what to expect as the case proceeds.

A trademark opposition is when one party elects to oppose the existing trademark application of another party due to one of several grounds, such as the pending trademark application is confusingly similar to the complaining party’s existing trademark registration. The complainant in a trademark opposition is called the Opposer.  The trademark application owner whose trademark application is being opposed is called the Applicant.

So, a trademark opposition must allege one or more grounds for challenging a trademark application. Most often, a trademark application is opposed by someone who owns prior rights for an identical or confusingly similar trademark.  But, trademark applications can also be challenged on a number of other grounds.  For instance, oppositions may be based on the opposer’s belief that the trademark is deceptive, merely descriptive, deceptively misdescriptive, generic, functional, or likely to dilute the distinctive quality of the opposer’s famous trademark.  In addition to alleging a valid ground for opposition, the opposer needs to show that it has standing to oppose the application.

The following factors should be considered before opposing a trademark application: An opposer must show both a real interest in the proceedings as well as a reasonable basis for its belief of damage. In other words, an opposer must consider and adequately state the potential damage caused by registration of the mark at issue, and have a reasonable basis for believing so.

There may be several grounds for opposing a trademark application, but some of the more common ones include likelihood of confusion and mere descriptiveness.

Regarding the European Union Intellectual Property Office procedure, the EU trade mark application is published in the EU Trade Marks Bulletin and a period of 3 months is given in which to file a notice of opposition, in order to protect earlier rights that the future European Union trade mark could affect.

Therefore, the European Union Trade Marks Bulletin constitutes the means of informing when a European Union trade mark application has been filed, thus allowing the proprietors of earlier rights to protect such a right.

The evidence submitted for standing and proving opposition grounds must consist of ‘indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based’. For example, evidence may consist of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and sworn or affirmed statements.

Find out more about trademarks on our blog and contact us for any problems regarding your trademark.