An EUIPO opposition against an EU trade mark is a formal procedure that allows the proprietor of earlier rights to contest the registration of an already published application. Unlike the examination of absolute grounds, which EUIPO conducts on its own initiative, an opposition is not initiated by the Office: it is filed exclusively by a party entitled to do so under Article 46 EUTMR.
A detailed breakdown of the timelines, the cooling-off negotiation period, evidence of use of earlier rights, and the cost of the procedure is provided in our separate article on third-party oppositions in EU trade mark registration. This article focuses on the grounds on which an opposition may be filed at all — and what that means for an applicant from Ukraine.
Who Has the Right to File an Opposition
Article 46 EUTMR defines the circle of eligible parties more broadly than simply "proprietors of earlier registered marks." The right to file an opposition belongs to: proprietors of earlier registered EU trade marks or national trade marks of member states; proprietors of earlier applications for registration — subject to their subsequent registration; proprietors of well-known marks within the meaning of Article 6bis of the Paris Convention (Article 8(2)(c) EUTMR); authorised licensees with the consent of the proprietor of the earlier rights; proprietors of unregistered signs or other signs with more than local significance protected under the law of a member state — for example, trade names (Article 8(4) EUTMR); persons authorised to protect geographical indications pursuant to Article 8(6) EUTMR.
Similarity of Signs: A Global Assessment, Not a Mechanical Test
One of the primary grounds for opposition is a likelihood of confusion between the applied-for mark and an earlier registered sign. EUIPO does not apply a simple formula here — "one criterion matched, that is enough." The assessment is a global one: visual, phonetic, and semantic similarity of the signs are analysed together with the similarity of the goods or services, the relevant consumer group, their level of attention, and the distinctive character of the earlier mark. These factors are interdependent — the principle of interdependence, established in the case law of the Court of Justice of the EU (Canon, Sabel): a lower degree of similarity between the goods may be offset by a higher degree of similarity between the signs, and vice versa. A finding of likelihood of confusion is therefore always made on the totality of the circumstances of the individual case, not on the formal matching of a single parameter.
The Goods and Services Need Not Be Identical
An opposition does not require the goods or services of the applied-for and earlier registered marks to correspond word for word — the legal category here is: identical or similar goods and services. Similarity is assessed by reference to their nature, purpose, method of use, and whether they compete with or complement each other on the same market.
A Trade Mark with a Reputation: A Separate, Broader Regime
Separate from the standard earlier rights regime, Article 8(5) EUTMR provides extended protection for earlier marks with a reputation — and this applies not only to EU trade marks with a reputation throughout the Union but also to national marks of member states with a reputation in the relevant territory. This is not the same as a well-known mark under Article 6bis of the Paris Convention, which operates in the EUTMR through Article 8(2)(c) and is analysed under Article 8(1) in respect of identical or similar goods, albeit on a different legal basis. A mark with a reputation, by contrast, allows an opposition to be filed even in respect of goods or services that do not directly overlap with those of the applied-for sign, where use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.
Is Representation Mandatory?
For applicants who do not have a domicile, principal place of business, or a real and effective industrial or commercial establishment in the European Economic Area (EEA), representation before EUIPO is mandatory in all proceedings other than the filing of the application for registration itself — this follows directly from Article 119(2) EUTMR. The criterion here is the existence of a domicile, principal place of business, or a real and effective industrial or commercial establishment in the EEA — not the nationality or country of incorporation of the company as such: where an applicant has such an establishment within the EEA, mandatory representation on this basis does not arise. For most Ukrainian applicants without such an establishment, this means: an application may be filed independently, but as soon as an opposition arises, EUIPO will issue a notification of deficiency and set a deadline for appointing a representative with a place of business in the EEA.
What an Applicant Should Do Upon Receiving an Opposition
On receiving an opposition notice, the applicant should analyse the legal grounds relied upon, assess the risks to the specific list of goods and services, choose a strategy — ranging from a partial restriction of that list to a full challenge of the grounds — and ensure that procedural deadlines are not missed. A preliminary conflict search before filing allows a proportion of such risks to be identified before publication, when adjusting the list of goods and services or the sign itself is simpler than defending an already filed application.
It is also worth bearing in mind that an opposition can extend the overall registration timeline significantly: the standard cooling-off period is two months, but where both parties submit timely extension requests, the total duration can reach 24 months. This should be factored into the business plan for a brand launch in the EU market rather than assuming the shortest possible scenario.
A legal assessment of the grounds for opposition is the point at which an applicant's independent response is most often either excessively panicked or excessively confident. Dr. Emil Benatov & Partners analyses the grounds for opposition and represents applicants at the adversarial stage before EUIPO.
