Opposition Proceedings in Germany, the EU, and International Trademark Law

Opposition proceedings are a crucial aspect of trademark law, allowing third parties to challenge the registration of a trademark based on earlier rights. These procedures vary in Germany, the European Union (EU), and under international systems like the Madrid System. Below is a detailed explanation of the different opposition proceedings, their processes, grounds, and examples.

1. Opposition Proceedings in Germany

1.1 Legal Framework

• Governed by the German Trademark Act (Markengesetz, MarkenG), §§ 42–45.
• Conducted before the German Patent and Trademark Office (DPMA).

1.2 Filing an Opposition

• Who Can Oppose? Owners of earlier trademarks, company names, or other prior rights.
• Deadline: Opposition must be filed within 3 months of the publication of the trademark registration in the Markenblatt (Trademark Gazette).
• Fee: €250 for filing an opposition.

1.3 Grounds for Opposition

1. Relative Grounds (§ 9 MarkenG):
• Earlier identical or similar marks for identical/similar goods/services.
• Likelihood of confusion.
2. Other Grounds:
• Earlier well-known marks (§ 10 MarkenG).
• Protection under international treaties (e.g., Paris Convention).

1.4 Procedure

• Filing of the opposition, including grounds and evidence.
• Exchange of briefs between the opposing party and the trademark owner.
• Decision by the DPMA, which may lead to full or partial cancellation of the contested trademark.

1.5 Example

Case: "Sparkassen-Rot" (I ZB 52/15)

• Sparkasse opposed the registration of a similar color mark based on its earlier color trademark for financial services.
• The court ruled against Sparkasse due to insufficient distinctiveness of the earlier mark.

2. Opposition Proceedings in the EU

2.1 Legal Framework

• Governed by the EU Trademark Regulation (EUTMR), Articles 46–57.
• Conducted before the European Union Intellectual Property Office (EUIPO).

2.2 Filing an Opposition

• Who Can Oppose? Owners of earlier EU Trademarks (EUTMs), national marks, international marks with effect in the EU, or other protected rights.
• Deadline: Opposition must be filed within 3 months of the publication of the EU trademark application in the EU Trademark Bulletin.
• Fee: €320 for filing an opposition.

2.3 Grounds for Opposition

1. Relative Grounds (Article 8 EUTMR):
• Identical or similar earlier marks for identical/similar goods/services (likelihood of confusion).
• Earlier well-known trademarks in the EU (dilution or unfair advantage).
2. Non-Registrable Signs:
• Collective marks, certification marks, or other specific protected rights.

2.4 Procedure

• Filing of opposition with grounds and evidence.
• Cooling-off period: Parties have 2 months (extendable to 24 months) to settle amicably.
• Examination of the opposition by the EUIPO Opposition Division.
• Decision, which can be appealed to the EUIPO Boards of Appeal and subsequently to the General Court and the CJEU.

2.5 Example

Case: "Halloumi v. EUIPO (C-766/18 P)"

• The Foundation for the Protection of the Traditional Cheese of Cyprus challenged the registration of a similar mark for dairy products.
• The CJEU emphasized the importance of assessing the distinctiveness of collective marks in opposition cases.

3. Opposition Proceedings under the Madrid System (IR)

3.1 Legal Framework

• Governed by the Madrid Agreement and Madrid Protocol, administered by the World Intellectual Property Organization (WIPO).
• National trademark offices in designated countries handle oppositions.

3.2 Filing an Opposition

• Who Can Oppose? Owners of earlier rights in a designated country.
• Deadline: Varies by jurisdiction (generally 1–3 months after publication in the national trademark office’s gazette).
• Fee: Varies by jurisdiction and office.

3.3 Grounds for Opposition

• National trademark laws apply, and grounds typically include:
• Likelihood of confusion with earlier trademarks.
• Misleading or deceptive marks.
• Non-compliance with specific national regulations (e.g., geographical indications).

3.4 Procedure

1. Notification by WIPO: Once a mark is published, designated countries notify local offices.
2. Opposition Period: Third parties file oppositions with the national office.
3. Decision: The national office issues a decision; if the opposition is upheld, protection is refused in that country.

3.5 Example

Case: "Roquefort Case"

• A French organization opposed the international registration of a cheese-related mark in countries where "Roquefort" was protected as a geographical indication.
• Several jurisdictions upheld the opposition, emphasizing the importance of aligning with national GI protections.

4. Comparison of Opposition Proceedings

5. Role of Trademark Attorneys in Opposition Proceedings

5.1 Filing and Defending Oppositions

• Drafting opposition notices with clear legal arguments.
• Representing clients in defending against oppositions.
• Advising on settlement options during the cooling-off period (EUIPO).

5.2 Evidence Collection

• Providing proof of use for earlier marks in defense or as a requirement for opposition success.
• Gathering market surveys, invoices, and other documentation to support claims.

5.3 Strategic Planning

• Advising on whether to oppose or settle.
• Preparing strategies for cross-jurisdictional opposition cases under the Madrid System.

5.4 Appeals

• Representing clients in appeals before the EUIPO Boards of Appeal, the General Court, and the CJEU (for EU cases).
• Handling appeals within national jurisdictions for German and international cases.

5.5 Example

Case: "Adidas v. Shoe Branding (I ZR 63/15)"

• Adidas opposed a two-stripe mark based on its three-stripe trademark. Attorneys successfully argued that there was a likelihood of confusion, resulting in cancellation of the contested mark.

6. Future Trends in Opposition Proceedings

6.1 Digital Transformation

• Automated tools for similarity checks and evidence submission (e.g., EUIPO’s AI-driven tools).

6.2 Non-Traditional Marks

• Increasing opposition cases for motion, sound, and holographic marks.

6.3 Globalization

• Greater reliance on the Madrid System for international disputes.