EU trade mark registration (EUTM) and the defence against possible opposition (opposition)

Legal Insight

March 2022

Ioannis Psarakis, Lecturer, LL.M (III), PhD  Cand.

(Republished from  Capital)

Summary: It has been established - and we have repeatedly emphasized - that the benefits of national trademark registration are many. This is even more so in the case of the EU trademark. And although the road to registration (or even after registration) is "not paved with rose petals", the assistance of a legal expert in trademark law (already during the formulation of your sign) is a valuable asset that accompanies and strengthens your trademark both during the registration process and throughout its life. In today's article we will focus on the case of third party opposition, which is filed within three months of the publication of the EU trade mark application.

Ι. The usefulness of the European Union Trademark (EUTM)

We have discussed in several articles the reasons why trademark registration is a perfectly advantageous option for the entrepreneur. It has been observed that many companies register a trademark before they even start trading, and this is quite logical: they want to put the whole business venture on a secure footing right from the start. After all, trademark registration fees, especially for Greece, are among the lowest in the EU.

But while a national trademark offers protection only in the territory of a certain country (e.g. Greece, if we are talking about a Greek national trademark), many times the entrepreneur will seek protection in other countries as well. This is particularly the case in the classic case of exports and e-commerce, a phenomenon which has been particularly booming in recent years. There are quite a few entrepreneurs who, although they start their activity with the (initial) focus on the Greek market, are prepared to register an EU trademark, due to the relatively low cost of the procedure and the wide-ranging benefits it can have (protection of their trademark in all EU countries).

Recognising this reality, the European Union has already launched an Intellectual Property (IP) grant programme focusing on small and medium-sized enterprises (SMEs). The Ideas Powered for Business SME Fund is a grant programme designed to strengthen the intellectual property (IP) rights of SMEs in the EU. It is an initiative of the European Commission and implemented by the European Union Intellectual Property Office (EUIPO) - for 2022 it will run from 10 January 2022 to 16 December 2022. Grants are limited and will be allocated on a first come, first served basis. For trademarks, a 75% reimbursement of costs (increased from the 50% granted in previous rounds of the action) is provided for application fees, additional fees per class and fees for examination, registration, publication and suspension of publication at EU, national and regional level. Thus fees for filing an EU trade mark can reach up to €250.

II. The procedure

In order to register a particular indication as an EU trademark - then and only then is there an exclusive right to an EU trademark - a declaration of filing with the European Union Intellectual Property Office (EUIPO) is required. This application is subject to an ex officio examination as to its so-called absolute inadmissibility. For example, a person cannot apply to register as a trade mark an indication which is descriptive or laudatory of the goods distinguished. In the latest decision issued by the EUIPO Board of Appeal at the time of writing (DECISION of the Fifth Board of Appeal of 3 February 2022 In case R 1131/2021-5) it was held that the indication "FUCKING AWESOME" "as a whole the combination of both elements undoubtedly will be understood by the relevant public as meaning very or extremely excellent or outstanding" and therefore was not accepted for registration.

However, a sign may be similar to a degree of likelihood of confusion with another sign which enjoys priority in time (e.g. a previously registered mark) or may infringe a mark of reputation (e.g. bear only a minimal similarity and be found to derive an unfair advantage - free riding - from the use). Here we are talking about the "relevant grounds of inadmissibility". In this case, the matter is not examined ex officio. It requires the right holder to file an opposition before the EUIPO within three months of the publication of the filing statement. This opposition is, of course, communicated to the filer in order to negotiate with the opposing party﮲ if this cooling off period (in principle 2 months) does not lead to a mutually acceptable solution, the procedure proceeds.

The opposing party shall henceforth have a period of two (more) months to complete its file with all the evidence and observations it considers necessary to substantiate its opposition. After the expiry of these two months, and once the file with the submitted evidence and observations (if any) has been forwarded, the applicant will also have two months to reply to the opposition (observations). In his observations, the applicant will put forward all the legal and factual arguments in support of the registrability of his application. Of particular importance at this stage is the citation of case law, i.e. decisions of the Court of Justice of the European Union (CJEU), the General Court of the European Union (GCEU) and the practice of the EUIPO in cases where similar or identical facts or legal issues have been decided. 

At this stage, the applicant may also submit a request for proof of use, essentially asking the opponent to prove that any earlier trade marks registered for more than five years have been used in relation to the goods applied for. Five years must have elapsed since registration for this objection to be meaningful. As we have written elsewhere, a mark may be registered to distinguish goods or services, even if the applicant is not yet ready to market all of the goods or services listed in the application for registration. This grace period lasts for five years. After the five years, he must prove - if an objection is raised - that he has used the indication in respect of all the goods. If he proves this in part, his opposition can be based on the specific indication, but only in respect of the specific goods which he has actually put on the market.

Thus, if such an objection is filed, the filer may wait until the objector provides such evidence before submitting its evidence and comments. The opponent is then given the opportunity to comment on the comments of the complainant. The submission of a proof of use objection is - where appropriate - a very useful first reaction of the applicant since it may result in a significant weakening of the opposition. If the applicant does not request proof of use but submits evidence and observations, the opponent has a period of two months to submit its observations on the evidence and observations. A decision on the opposition is usually taken after these exchanges of observations.

In certain cases, it may be necessary or appropriate to hold a further exchange of observations. This may be the case where the case involves complex issues or where the opponent raises a new issue which is admitted to the proceedings. In this case, the complainant may be given the opportunity to respond. It is then up to the examiner to decide whether the opponent should be given the opportunity to submit new observations.

The EUIPO Opposition Division then issues a decision on the opposition. This decision may be appealed to the EUIPO Border of Appeals. 

The entire EU trade mark procedure, from filing the application and oppositions to the response and registration of the mark, takes place electronically, via the EUIPO website.

A very good informative video on opposing a national trade mark has been posted by the Ministry of Development and Investment at https://www.youtube.com/watch?v=3E-zp1G_BUk. Although the video concerns a national trade mark, the procedures to be followed are very much the same since - shortly and not to bore you with details - they are based on almost identical EU legal texts. In other words, you can trust this video to get information on the EU trademark as well.

III. Conclusions

The EU trademark is a very powerful weapon for the entrepreneur, since it is a first-class passport and a pseudo-uniqueness ploy across the EU market. Although the path to obtaining it is very likely to be unhindered, the support of a lawyer with expertise in EU trademark law helps significantly in overcoming these difficulties. Opposition by third parties - from the time of publication of the application for registration and for three months, i.e. until registration - is one of the most likely obstacles one may face. 

Good legal advice before the EUIPO, with knowledge of the procedures and especially of the case law on which the EUIPO itself bases its decisions, takes advantage of all the chances of a favourable decision. This will ultimately lead to the registration of an EU trade mark. 

Finally, as we have mentioned many times, the best possible approach is to obtain expert advice already during the formulation of the indication to be registered. This is for two reasons: 

First, expert advice will drastically reduce the chances of the mark being refused on absolute grounds of inadmissibility (e.g. descriptiveness). Absolute grounds of inadmissibility can be raised even after registration﮲ i.e. for the cancellation of an already registered trade mark. Indeed, registration - as we have already mentioned elsewhere - 'says a lot, but it also says very little'. The registration which really adds value to the business is only the one which has been made following professional advice.

Secondly - and more importantly - the receipt of expert advice in the formulation of the indication will have the prospect of future litigation. In other words, we will be able to formulate from the outset the "weapons" that one would wish to have in the adversarial process. This is very beneficial and helps significantly to a good outcome of the case.