EUIPO Trade Mark Opposition: Grounds, Cooling-off and Proof of Use

Opposition is the main way a brand owner keeps a conflicting EU trade mark off the register before it is registered. It is an inter partes proceeding at the European Union Intellectual Property Office (EUIPO), decided by the Opposition Division on the papers each side files. Whether you are the earlier-rights holder trying to block an application or the applicant defending one, the shape of the process is the same, and understanding it early tends to decide the outcome more than the eventual arguments do. This page sits under the broader EU trade marks guide and focuses on the mechanics that matter most.

When you can oppose

Once an EU trade mark application clears formalities and examination, the EUIPO publishes it. It is worth being clear about what that examination covers: the EUIPO checks formalities and absolute grounds (whether the mark is registrable in itself), but it does not examine relative grounds of its own motion. In other words, it does not screen an application against earlier marks and rights. That is precisely why opposition exists: policing conflicts with earlier rights is left to the holders of those rights, who raise them through opposition. Publication starts the opposition window: a fixed period during which third parties can file a notice of opposition. That window is commonly cited as three months from publication, but you should treat the exact period, and how it is calculated, as something to confirm against the current EUIPO rules rather than assume, because procedural periods and their computation can change. Miss the window and the route closes; your remaining option after registration is cancellation (invalidity or revocation), which is a separate and generally harder path.

An opposition is filed on a form, in the language of the proceedings, and an official fee applies. The language of the proceedings is not a free choice among all EUIPO languages: it is tied to the second language the applicant designated for the contested application (or the application language where that is itself one of the five EUIPO languages), so confirm the eligible language with the EUIPO before you file. Do not rely on any figure quoted second-hand; official fees apply, and you should confirm the current amount with the EUIPO or local counsel before you file. The notice must identify the earlier rights relied on and the goods and services it targets. You can usually file a bare notice and add the full reasoning and evidence later, within the period the EUIPO sets, but the earlier rights and their scope should be pinned down at the outset.

Relative grounds under Article 8 EUTMR

EU oppositions run on relative grounds under Article 8 of the EU Trade Mark Regulation (EUTMR), meaning grounds based on someone else's earlier right rather than on the mark being inherently unregistrable. The most common is Article 8(1)(b): an earlier mark that is identical or similar for identical or similar goods and services, where there is a likelihood of confusion, including a likelihood of association. Identity across the board falls under Article 8(1)(a).

Beyond confusion, Article 8 also covers marks with a reputation, where use of the later mark would take unfair advantage of, or be detrimental to, the earlier mark's distinctive character or repute, even where the goods are dissimilar. It reaches unregistered marks and other signs used in trade of more than local significance, where national law allows their proprietor to prohibit the later mark, and rights an agent or representative has filed without the proprietor's consent. Earlier rights can be EU trade marks, national marks in a member state, international registrations designating the EU, or, in some cases, well-known marks. Because a single earlier national right can sink an EU-wide application, oppositions often turn on which right you lead with. Where the conflict spans the UK as well, the EU versus UK trade mark comparison is worth reading alongside this, since Brexit split those systems.

The cooling-off period

Admissible oppositions open with a cooling-off period: a stretch of time, before the adversarial exchange of evidence begins, in which the parties can negotiate. Many disputes settle here through a coexistence agreement, a limitation of the contested goods and services, or withdrawal, which is faster and cheaper than fighting to a decision. The cooling-off period runs for a set initial length and can, by joint request, be extended up to a ceiling; confirm the current durations with the EUIPO, as these are set procedurally and can be adjusted. If no settlement lands, the cooling-off ends and the adversarial phase starts, with the opponent going first on evidence and arguments.

Proof of use

Proof of use is the applicant's most useful lever. Where the earlier mark relied on has been registered for long enough to be subject to the use requirement, the applicant can, at the right procedural moment, request that the opponent prove genuine use of that mark for the goods and services it invokes, over the relevant period, in the relevant territory. If the opponent cannot, the unproven goods and services drop out of the comparison, and the opposition can narrow sharply or collapse. This is why opponents should assemble dated, territory-specific evidence of real commercial use (invoices, packaging, advertising, sales data) before relying on an older registration, and why applicants should always consider whether the request is open to them. The precise qualifying period and how genuine use is assessed should be checked against current EUIPO practice and case law.

A note on scope, and how IPEnvoy can help

IPEnvoy is not a law firm and does not provide legal advice; this is general information. Confirm the current position with the EUIPO and a qualified local IP professional before you act on any deadline, ground or evidence requirement. Opposition timelines are unforgiving and the strategic choices, which earlier right to lead with, whether to force proof of use, when to settle, reward early specialist input. If you are weighing an EUIPO opposition or have just been served with one, IPEnvoy can connect you with vetted IP counsel who handle EU oppositions, so the right person is on it while the window is still open.