Opposition or civil proceedings: which route is right for your trademark dispute?
If you notice that another company wants to register a brand name or logo that is too similar to your own brand, it is important to act quickly to protect your rights. One of the most important tools you can use for this is the opposition procedure at the trademark office. This procedure allows you to object to the registration of a new trademark and thus prevent it from actually being included in the trademark register.
In this article, I explain how opposition proceedings work, in which situations they offer a solution and in which cases it may be wiser to go to court after all.
Where can you go in the event of a trademark dispute?
In the event of a trademark dispute, there are roughly two routes you can take:
1. Trademark office: you can initiate proceedings at the trademark office where the trademark you wish to challenge has been applied for or registered. For Benelux trademarks, the Benelux Office for Intellectual Property (BOIP) is competent, and for EU trademarks, the EUIPO; or
2. Civil court: you can initiate proceedings in the civil court.
The choice between the trademark office and the court depends, among other things, on your objective. Do you want to stop the use of the trademark and claim damages? In that case, proceedings before the civil court are often the appropriate route. Do you want to prevent a competitor’s trademark from being registered? Then a so-called opposition procedure at the trademark office is usually the most efficient route. However, it is also possible to claim in court that the competitor withdraws the trademark application.
What is opposition proceedings?
Opposition proceedings are administrative proceedings at the trademark office in which you object to the registration of a new trademark. This is often the first step if you see that a competitor is applying for a trademark that is very similar to your older trademark or to a name that you have been using as a company name for some time (even if you have not registered that name as a trademark).
After the trademark office has published the trademark application in the public trademark register of the BOIP or the register of the EUIPO, the trademark is not yet definitively registered (except in the case of a Benelux urgent registration). From that moment, the two-month opposition period (in the EU and Benelux) begins, during which others can still object to the registration.
A common reason for opposition is that the trademark applied for is so similar to your trademark, and has also been applied for similar products or services, that there is a risk of confusion among the public.
How does an opposition procedure work?
After the opposition has been filed, the trade mark office first assesses whether it is admissible. This is followed by a cooling-off period, during which the parties can try to reach a solution between themselves. If no agreement is reached, both parties are given the opportunity to explain their positions in writing. The substantive assessment then takes place and the trademark office decides whether the new trademark will be refused in whole or in part or whether it will still be registered. If you disagree with this decision, you can still appeal against it.
How long does an opposition procedure take?
An opposition procedure is usually faster than civil proceedings before a court. On average, an opposition takes between 6 and 12 months. The exact duration depends on various factors, such as whether the parties request a postponement or temporarily suspend the procedure outside the cooling-off period in order to reach a solution together.
Although summary proceedings before the civil court may be faster, they are not a suitable alternative in this context. In summary proceedings, the court can only take provisional measures; ordering the competitor to withdraw the trademark application is considered too definitive and therefore cannot be pronounced by the preliminary relief judge. Such a claim requires extensive proceedings on the merits. For this reason, opposition proceedings before the Trademark Office are often the most efficient choice.
Please also read my previously published article for more information about summary proceedings and proceedings on the merits before the civil court.
When is it better to go to the civil court?
It is important to know that in opposition proceedings you cannot enforce a ban on the use of the trademark, nor can you claim damages. Opposition proceedings are primarily intended to determine whether or not the trademark may be included in the register (or only for certain products or services).
This means that if your competitor not only applies for a similar logo as a trademark, but also actually uses this logo in the market, you should consider civil proceedings in addition to or instead of opposition. Only through the civil courts can you actually stop the use of the logo and, if necessary, claim damages. A successful opposition only ensures that the trademark is not registered, but does not automatically prevent the logo from being used in practice.
It is also good to know that when assessing an opposition, the trade mark office mainly looks at the information in the trade mark register. Other circumstances, such as contractual agreements, actual use or a history of cooperation, are usually not taken into account, or only to a limited extent, in opposition proceedings. In civil proceedings, however, these circumstances can be taken into account. This may influence your strategic choice: will you opt for opposition only, court proceedings only, or a combination of both procedures?
Seek help from a specialist
As you can see, the choice between opposition proceedings and civil proceedings depends greatly on your specific situation. Because deadlines, formalities and the chances of success vary from case to case, expert guidance is indispensable. A trademark lawyer can analyse both your position and that of your opponent, advise you on the most promising approach (opposition, infringement proceedings or a combination of both) and assist you in proceedings before the BOIP, the EUIPO and the civil court. This will ensure that your trademark is protected as effectively as possible.
