Challenging the Validity of Registered EU Trademarks: Opposition and Invalidation Mechanisms
The European Union Intellectual Property Office (EUIPO) grants trademark protection across all EU member states through the European Union Trade Mark (EUTM) system. While this centralized process streamlines registration, it also provides mechanisms for third parties to challenge the legitimacy of registered trademarks. For businesses and rights holders, understanding these procedures—opposition and invalidity—is critical to safeguarding intellectual property and preventing conflicts in the marketplace.
I. Opposition Procedure: Pre-Registration Challenges
The opposition process allows third parties to contest a trademark before it is officially registered.
Timing and Grounds
Relative grounds: Conflict with an earlier trademark or unregistered right (e.g., well-known marks, trade names, copyrights).
Absolute grounds: The mark lacks distinctiveness, is descriptive, or violates public policy/morality.
An opposition must be filed within three months of the trademark’s publication in the EUIPO’s EUTM Bulletin.
Valid grounds include:
Procedure Overview
The opposer submits a formal notice, specifying the grounds and evidence (e.g., proof of prior rights).
A "cooling-off" period (up to 24 months) allows parties to negotiate settlements.
If unresolved, both parties exchange arguments, and the EUIPO issues a decision. Possible outcomes include rejection of the application, partial rejection, or dismissal of the opposition.
Strategic Considerations
Opposition is cost-effective compared to litigation but requires vigilance in monitoring the EUIPO’s publications.
Success hinges on demonstrating a likelihood of confusion or dilution of prior rights.
II. Invalidation Procedure: Post-Registration Challenges
If a trademark has already been registered, third parties may seek its invalidation through administrative or judicial routes.
Grounds for Invalidation
Absolute grounds: The mark should never have been registered (e.g., generic terms, deceptive marks).
Relative grounds: Conflicts with earlier rights (similar to opposition grounds).
Non-use defense: If the trademark owner cannot prove genuine use within 5 years of registration, invalidation may succeed.
Filing an Application for Declaration of Invalidity
Submit a request to the EUIPO or relevant national court, depending on jurisdictional scope.
Evidence must substantiate claims (e.g., prior registrations, market surveys proving reputation).
The trademark owner may counter with defenses, such as acquired distinctiveness through use.
Outcomes and Implications
If successful, the trademark is retroactively deemed invalid ab initio (from the outset).
Partial invalidation may apply if only specific goods/services are contested.
Key Differences Between Opposition and Invalidation
Aspect
Opposition
Invalidation
Timing Pre-registration (3-month window) Post-registration (no time limit)
Cost Lower Higher (may involve litigation)
Burden of Proof Opposer must prove conflict Petitioner must prove invalidity
Scope Prevents registration Removes existing rights
Strategic Tips for Third Parties
Monitor the EUTM Bulletin: Use EUIPO’s eSearch plus tool to track applications.
Act Promptly: Missing the 3-month opposition window forces reliance on invalidation.
Gather Robust Evidence: Prioritize documentation of prior rights, market presence, and consumer confusion.
Consider Settlement: Negotiation during the cooling-off period can save time and costs.
Assess Long-Term Risks: Evaluate whether a challenged trademark truly threatens your business interests.
Conclusion
The EU trademark system balances efficiency with safeguards for third-party rights. While opposition offers a proactive way to block conflicting marks, invalidation serves as a remedy for improperly registered trademarks. By leveraging these mechanisms strategically, businesses can protect their brands and mitigate legal risks in the EU’s competitive marketplace.
For rights holders, staying informed about EUIPO procedures and maintaining a vigilant watch over trademark registrations are indispensable steps to ensuring long-term IP security.
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