Practical advice on opposition proceedings against Community Trade Mark applications

Hans-Jürgen Müller, maximark@propat.de, July 8 2000

Abstract: This article gives some practical advices and a brief overview of how to oppose a CTM application and how the Office works.

The European Community trade mark Office OHIM in Alicante received more than 26.000 oppositions against CTM applications until May 2000. This high amount of work was unexpected and is a reason for OHIM officers to handle opposition proceedings very strictly from the formal point of view.

According to Virginia Douglas, Member of the Opposition Division at OHIM, each opponent has to be very careful in order not to forget any requirements of the Rules, e.g. Rules 16 and 22, and to file the necessary documents in the correct language in due course.

In the first step OHIM checks whether or not the Notice of Opposition is admissable according to Rule 18. It does not yet examine the opponent's arguments, attached documents and special requests.

During the following cooling-off period the Office merely exchanges petitions and documents between both parties in order to completely inform them about the other party's position. OHIM does not yet examine the opponent's arguments, documents and special requests.

The term of the end of this period can be postponed upon requests of both parties or if one party shows exceptional reasons for postponing. This period allows the parties to seek for amicable agreements.

The opposition proceedings commence after the end of the cooling-off period. In case the applicant denies a sufficient commercial use of the opponent's trademark within the territory of the older mark during the previous 5 years before the preparation of the CTM trademark application, the opponent has to be careful to refer to all aspects (place, time, extend and nature) of the use of the trademark. German trademark owners and their attorneys and agents, respectively, are very experienced because of a very similar practice in Germany. For instance, it is necessary that the trademark in question has been mentioned on respective invoices showing that the goods and services, respectively, were sold in the territory of the earlier mark.

It is also important to use the working language of the opposition proceedings and to prepare translations if documents are in another language.

Furthermore, in case of confusingly similar trademarks, it is advisable that the applicant limits the list of goods and services, in order to avoid that identical or similar goods and services, respectively, (with regard to the opponent's trademark registration) are maintained. OHIM is not obliged to make proposals.