Opposition is a relatively inexpensive procedure to resolve a trademark dispute without going to court. You can only file an opposition within a period of two months from the date of publication of the later trademark. If you want to take action against a conflicting trademark after that period, you can initiate a cancellation procedure at BOIP or challenge it in court. More about addressing trademark infringement
Filing an opposition is basically lodging an objection to the registration of a more recent trademark. Opposition may be filed by the owner (holder) of an older trademark against the registration of an identical of (very) similar newer trademark filed for the same or similar products and services as those for which the older trademark was registered. The owner of a different older IP right (e.g. a protected geographical indication) can also file an opposition, as can a client against the registration of a newer trademark by his agent (representative). In such cases, you are the opponent.
In the course of the application procedure to register your trademark, you may also find yourself faced with an opposition. In that event, the owner (holder) of an identical or similar older trademark or the owner of another older IP right files an opposition against your more recent trademark application. You are then the defendant. More about opposition against your trademark
In both situations, an external IP professional can assist and advise you. Opposition is a complex legal procedure. It is important to work through the process carefully and correctly.
You can file an opposition when:
- an application has been submitted for an identical trademark for the same products or services;
- an application has been submitted for an identical or similar trademark for the same or similar products or services, which may cause confusion in the relevant public;
- an application has been submitted for identical or similar trademark for other products or services, taking unfair advantage of or infringing the distinctiveness or the reputation of the existing trademark;
- a more recent trademark may cause confusion with a well-known mark, as referred to in Article 6bis of the Paris Convention;
- a more recent trademark is open to opposition by you as the owner of a protected geographical indication;
a more recent trademark application was filed by an agent (a representative) in his or her own name without the authorisation of his or her client (proprietor of the trademark).
You can only file an opposition at BOIP against a Benelux trademark or an international trademark with protection in the Benelux. You must file an opposition against an EU trademark at EUIPO.
Filing an opposition is a complex legal procedure. There are also costs involved. It is therefore important to conduct the procedure carefully and correctly. An expert in the field of intellectual property, for example an IP professional, can do this for you.
Within what timeframe?
You can file an opposition within a period of two months, after the date on which the more recent trademark was published. The publication date can be found at the bottom of the copy of that trademark in the Trademarks Register. In the Register, you can also see whether it is still possible to file an opposition, as the opposition period is stated there too. You can find the general details of international trademarks in our Register, but not their publication date. These can be found in the WIPO Gazette.
Once the two-month opposition period has passed, you can still take action against the conflicting trademark by:
- initiating a cancellation procedure at BOIP, or
- objecting to the conflicting trademark through the courts.
To do that, it is best to retain the services of an IP professional.
We can only process your opposition if it has been filed within the opposition period and the requisite fees have been paid.
Furthermore, when filing the opposition, you must clearly state:
- Who the opponent is. An opposition can be filed by either a person or a company. You can also file an opposition if you have a trademark licence. To do so, you need the permission of the owner (holder) of the trademark. Your data must exactly match the data recorded in the Register;
- Against which trademark you are filing the opposition;
- On which earlier trademark your opposition is based?
Once we have examined an opposition filed, a decision is issued as soon as possible.
1. The opponent is successful
- If the opponent is fully vindicated, we cannot register the more recent trademark, that was opposed, or we can only register it for those products and services that were not opposed;
- If the defendant's trademark is not registered at all or is struck entirely from the register, the defendant must pay 1,045 euro to the opponent;
- If the opponent is partly vindicated, we only register the defendant's trademark for some of the products and services. In this case, neither party is required to pay for (additional) costs;
- If the trademark was based on an accelerated registration, we remove it from the Register, in whole or in part depending on the decision. We call this full or partial cancellation.
2. The defendant is succesful
- If we find fully against the opponent, we reject the opposition and register the defendant's trademark in the Register. The opponent must pay 1,045 euro to the defendant;
- If the opponent is partially vindicated, we only register the defendant's trademark for some of the products and services. In this case, neither party is required to pay for (additional) costs.
The parties arrange payment of the 1,045 euro between themselves. Please note that BOIP has no role in this at all. The award of costs is enforceable. In other words, a bailiff can execute the BOIP opposition decision and, so, collect payment on behalf of the opponent or the defendant as applicable.
Benefits of filing an opposition
- No need to go to court
An opposition is an administrative procedure. You do not have to go through the courts.
Opposition is less expensive than a court case.