After an EU trade mark application is published in the EUIPO Bulletin, a three-month window opens during which an opposition to registration may be filed — and this is where the most precarious stretch of the journey begins for the applicant. During that period, any proprietor of earlier rights may file an opposition and halt registration entirely or in part. The period cannot be extended. Miss it — and the right to oppose is gone.
An opposition is an inter partesprocedure — between the parties: EUIPO acts as arbitrator between the applicant and the opponent, rather than independently seeking grounds for refusal. Unlike absolute grounds (descriptiveness, lack of distinctive character), which the examination checks ex officio, relative grounds under Article 8 of Regulation (EU) 2017/1001 are only triggered at the initiative of a third party.
Who Has the Right to File an Opposition
The circle of eligible parties is exhaustive and directly defined by Article 8 EUTMR.
Proprietors of earlier registered trade marks — EU trade marks, national marks of member states, or international registrations with effect in the EU or a specific member state. Licensees authorised to act on behalf of the proprietor of earlier rights. Proprietors of well-known marks within the meaning of Article 6bis of the Paris Convention, and marks with a reputation — for these, similarity of goods is not even required; a risk to the mark's reputation is sufficient. Proprietors of unregistered signs with more than local significance that are protected under the law of a member state (Article 8(4) EUTMR).
Each category requires a distinct set of evidence. A preliminary conflict search before filing can save considerably more than the search itself costs, particularly because some risks are not visible in the EUTM register and can only be identified at the level of individual Member States. This issue is examined in our article on The territorial paradox of EU trade mark registration.
Three Months to File — Then Negotiations
Once EUIPO has declared the opposition admissible, the cooling-off period begins: the window during which the parties may reach agreement without formal examination on the merits.
The default duration is two months from notification of admissibility. Upon a joint request by both parties, EUIPO extends this period once, bringing the total to 24 months. A nuance frequently overlooked: if, as a result of negotiations, the applicant restricts the list of goods or services or withdraws the application before the cooling-off period ends, the opponent receives their official opposition fee back.
After the cooling-off period, the opponent has a further two months to submit evidence on the merits. The applicant then has their turn to respond — and only after this exchange does the EUIPO Opposition Division issue its decision.
Opposition Is Not the Same as Third-Party Observations
These two procedures are frequently confused. Third-party observations concern absolute grounds — descriptiveness, lack of distinctive character, deceptive character of the sign. Anyone may submit them, without party status and without any right to further participation in the proceedings.
An opposition, by contrast, is a full adversarial procedure with party status, exchange of evidence, and the right to appeal. The losing party may lodge an appeal with the EUIPO Board of Appeal — the timelines and consequences of that procedure should be considered before the adversarial stage begins, not after a losing decision has been issued.
Proof of Use: When You Can Force the Opponent to Show Their Mark Is Not "Dead"
Where an opposition is based on an earlier trade mark registered for at least five years as at the filing or priority date of your application, you are entitled to request proof of genuine use of that mark — proof of use under Article 47(2) EUTMR.
This is not a formality. A significant proportion of "dormant" registrations in the EU have never been put to commercial use, and an opponent who cannot demonstrate genuine use loses the opposition automatically. A proof of use request should always be filed where the opponent's earlier mark is more than five years old.
Typical evidence submitted by the opponent: invoices and sales reports covering the five-year period, marketing materials with dates, website screenshots with publication dates, packaging samples or photographs of goods bearing the mark. The Court of Justice of the EU in Hipoviton (T-334/01) and Vitafruit (T-203/02) emphasised that it is the fact and nature of the use that is assessed, not commercial success — even modest sales volumes may be found sufficient where they are consistent and targeted at a specific market.
How the Proceedings Develop
The opponent files the opposition electronically and pays the fee. EUIPO checks admissibility — formal deficiencies, unlike absolute grounds, can be remedied within the opposition period. The cooling-off period begins: the parties either reach agreement or one of them exits the negotiations early by written notice, triggering the adversarial stage before the two-month default expires. The opponent submits evidence on the merits, the applicant responds and, where appropriate, requests proof of use. The Opposition Division issues its decision; the losing party may appeal to the Board of Appeal, and thereafter to the General Court of the EU.
What the Procedure Costs
The official EUIPO fee is €320, regardless of the number of grounds relied upon (Article 46(3) EUTMR). It is paid by the opponent. Representative costs are calculated separately and depend on the number of grounds, the volume of evidence, and the length of the cooling-off period.
The losing party at first instance reimburses part of the winner's costs — but the limits on recovery of legal fees are capped by regulation and rarely cover the actual expenditure in full.
What Actually Works in Negotiations
The cooling-off period is not a formal pause — it is the least expensive way to close a dispute. In practice, the most common outcome is a partial restriction of the list of goods or services: the applicant removes the Nice classeswhere a genuine conflict arises, and the opponent withdraws the opposition without further examination. A coexistence agreement is the second most frequent scenario, particularly where the parties operate in different geographic segments.
Relying exclusively on a negotiated settlement without simultaneously preparing a procedural position in case of escalation is a miscalculation. If negotiations break down in month 22 of the cooling-off period and the evidential base is not ready, the room for manoeuvre is considerably narrower than it would have been had a contingency strategy been worked out from the outset.
Opposition vs Third-Party Observations
| Criterion | Opposition | Third-party observations |
|---|---|---|
| Who may file | Proprietor of earlier rights | Anyone |
| Grounds | Relative (Article 8 EUTMR) | Absolute |
| Status of the filer | Party to the proceedings | Not a party |
| Right to appeal | Yes | No |
| Official fee | €320 | No |
If an opposition has already been filed against your application, the immediate steps are: check whether the opponent's earlier mark is more than five years old and immediately request proof of use; assess whether the dispute can be resolved by a partial restriction of the class specification; and do not wait until the final weeks of the cooling-off period to begin assembling evidence in case of escalation.
Dr. Emil Benatov & Partners supports applicants from preliminary conflict searches through to representation at the adversarial stage of opposition proceedings.
