A trademark opposition is a formal procedure through which the owner of an earlier right challenges a newly published trademark application before it proceeds to registration. It is one of the most important enforcement tools available to trademark owners — and one of the most time-sensitive. If you miss the opposition window, the mark registers and your enforcement options become significantly more complex and expensive.
Opposition is not litigation. It is an administrative proceeding before the trademark office — the EUIPO for EU trademarks, the BOIP for Benelux trademarks, or the relevant national office for national marks. The procedure is paper-based (or electronic), does not involve oral hearings in most cases, and is decided by an examiner or panel within the office.
After a trademark application passes examination, it is published in the official gazette or bulletin. This publication triggers the opposition period — a fixed window during which third parties can file an opposition.
At the EUIPO, the opposition period is three months from the date of publication. At the BOIP, it is two months. National offices across Europe have their own periods, typically ranging from two to three months. Under the Madrid System, the period depends on the designated country’s national law.
These deadlines are absolute. An opposition filed one day after the window closes will be rejected as inadmissible. There is no extension, no exception, and no appeal. This is why trademark monitoring — systematically watching for new applications that conflict with your marks — is essential. If you are not monitoring, you will not know about conflicting applications until it is too late to oppose.
The legal grounds on which you can oppose a trademark application depend on the jurisdiction, but the most common grounds across Europe are the following.
Likelihood of confusion. This is by far the most frequently invoked ground. You must demonstrate that the published mark is similar to your earlier mark and that the goods or services covered are identical or similar, creating a likelihood of confusion on the part of the public. The assessment follows the global appreciation test described in the article on trademark similarity: phonetic, visual, and conceptual comparison of the marks, combined with an assessment of goods and services similarity and the distinctive character of your earlier mark.
Identical marks for identical goods. Where the published mark is identical to your earlier mark and covers identical goods or services, you do not need to demonstrate likelihood of confusion — the conflict is presumed. This is the strongest ground for opposition, but strict identity requirements mean it applies only in a subset of cases.
Reputation. If your earlier mark has a reputation in the EU (or in the relevant territory for national marks), you can oppose a later mark even for dissimilar goods or services, provided that use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of your mark. This ground protects well-known marks against dilution, free-riding, and tarnishment.
Earlier rights other than trademarks. In some jurisdictions, you can oppose based on earlier rights that are not registered trademarks — such as unregistered marks with established goodwill, company names, trade names, or other signs used in the course of trade. The availability and scope of these grounds varies by jurisdiction.
Having the legal right to oppose does not mean you should always exercise it. Opposition proceedings take time (typically 12 to 24 months at the EUIPO), cost money (professional fees typically range from EUR 5,000 to EUR 15,000 depending on complexity), and carry risk (you may lose). The decision to oppose should be based on a realistic assessment of the threat and the likely outcome.
Factors that favour opposition include a high degree of similarity between the marks across multiple dimensions, identical or closely related goods and services, a genuine risk that the published mark will cause confusion in the market or among your customers, evidence that the applicant is operating in your market or intending to, and a strong earlier mark with inherent or acquired distinctiveness.
Factors that weigh against opposition include low mark-to-mark similarity that only becomes apparent in one dimension, goods or services that are in different markets with little overlap, the earlier mark being relatively weak or descriptive, the cost of proceedings being disproportionate to the commercial risk, and the availability of other remedies that may be more efficient.
At the EUIPO, opposition proceedings begin with a two-month cooling-off period — a window during which the parties are encouraged to negotiate a resolution without proceeding to a contested decision. The cooling-off period can be extended to a maximum of 24 months by joint request.
The cooling-off period is frequently productive. Many oppositions are resolved through negotiated coexistence agreements (where both parties agree to use their marks under specified conditions), voluntary restrictions of the goods and services specification by the applicant, or withdrawal of the application. If a settlement is reached, the proceedings are terminated without a decision on the merits. If not, the procedure moves to the adversarial phase.
If the cooling-off period does not produce a resolution, the opposition moves to the substantive phase. The opponent must submit evidence supporting its claims — proof of the earlier right, evidence of use (if challenged), and arguments on the merits. The applicant submits its defence. The Opposition Division (at the EUIPO) or the equivalent body at the BOIP or national office evaluates the evidence and arguments and issues a decision.
An important procedural point: if the earlier mark has been registered for more than five years (in the EU), the applicant can request proof of genuine use. If the opponent cannot demonstrate that the earlier mark has been genuinely used in the EU for the relevant goods and services during the five-year period, the opposition will fail regardless of the degree of similarity. This proof of use requirement means that marks that are registered but not commercially active cannot be used as a basis for opposition.
At the EUIPO, the official opposition fee is EUR 320. Professional fees for preparing and conducting the opposition vary by complexity but typically range from EUR 5,000 for straightforward cases to EUR 15,000 or more for complex proceedings involving multiple earlier rights, proof of use challenges, or reputation claims. The total timeline from filing the opposition to receiving a first-instance decision is typically 18 to 24 months.
At the BOIP, the official fee is EUR 1,045 and the procedure is generally shorter. National proceedings vary widely in cost and duration.
If the losing party appeals, the proceedings extend further — an appeal at the EUIPO Board of Appeal adds another 12 to 18 months and additional costs. Appeals to the General Court and ultimately the CJEU are available but rare and expensive.
Opposition is not the only tool for addressing a conflicting trademark application. Depending on the circumstances, alternatives may include direct negotiation with the applicant before or during the opposition period (often the fastest and cheapest route), a letter of protest to the trademark office (available at some offices, allowing you to draw the examiner’s attention to your earlier right without filing a formal opposition), waiting and filing a cancellation action after registration (which removes the time pressure of the opposition window but is typically more expensive), or simply monitoring the mark and taking enforcement action only if and when the applicant actually uses the mark in a way that causes confusion in the market.
The right approach depends on the specific situation. Not every conflicting application requires formal opposition. Some are better addressed through negotiation. Others pose so little commercial risk that the cost of opposition is not justified. The key is to make an informed decision — not to miss the deadline through inaction and then face a more expensive problem later.
If you have identified a conflicting trademark application and need to assess your options, get in touch or schedule a meeting with our team.
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