Cyprus: Trademarks: What Is The Opposition Process?

Last Updated: 25 April 2018
Article by Stella Georgiadou

In practice the registration of the European Union Trademark (EUTM) is very popular among owners of trademarks. The distinctive feature is that a registered trademark is subject to protection in all countries of the EU without exception (EU trademark registration countries). This fact represents a sufficient advantage for business entities and entrepreneurs who plan to do business within EU in general. The registration shall be carried out by the European Union Intellectual Property Office (EUIPO), which is the European authority for trademark and design protection (its former name – the Office for Harmonization of the Internal Market (OHIM)).

We have already written about registration of trademarks, which is obviously the first step on the way to protect and use them effectively. However, within the process of registration there is a risk of being involved in the process of EUIPO opposition committed by third parties alleging they possess earlier rights to the respective trademark. In addition, after successful registration of the trademark its owner has to monitor the submission of new applications with respect to it in order to prevent and disclose any possible infringements of its rights.

The EUTM opposition procedure is deemed to be an administrative process under trademark law which allows third parties to challenge the validity of a pending trademark application or a registered trademark. Such opposition may be filled with the EUIPO. The opposition process provides third parties with the opportunity to challenge an application for a particular trademark based on its earlier rights. This option shall be taken into account by the applicant as subject to the existence of some grounds which exclude the registration of a trademark.

The applicant who later becomes an owner shall also regularly monitor the later applications with respect to its trademark. It may be complicated and sometimes requires professional assistance (our firm has the respective expertise and knowledge and is ready to provide you or your company with the services of qualified assistants). To conduct a search, Trademark Watch service may be used in order to trace new applications for registration of identical or similar trademarks.

What is the time period for filing a notice of opposition?

A notice of opposition may be filed within three months following the date of official publication of the EU trademark application (i.e. the date of publication of application in the European Union Trade Marks Bulletin). Such official publication is made with the purpose (not exclusively) of informing interested parties of the potential registration of particular trademark. After the date of submission of opposition, there is a "cooling off' period of two months which may be extended by 22 months. This period is designated to conduct negotiations between the parties involved in the opposition process. Based on the results, the parties may reach an agreement between them and regulate the issue as they deem necessary.

What are the grounds for EUTM opposition?

The opposition shall specify the grounds on which it is based, namely the rights held by the interested party to an earlier trademark. Such grounds may be found in Article 8 (Relative grounds for refusal) EUTMR (Article 8(1) to 8(5) EUTMR). "Earlier rights" must have the date (but not hour or minute) of application for registration of a trademark preceding the date of disputed application (or earlier claim priority date). In other words, an interested party must prove its ownership to the trademark anywhere in the world based on the registration or use (if applicable).

Absolute grounds to reject registration relate to descriptiveness, genericness, fraud etc., and they are examined ex officio by the EUIPO. The opposition may be based exclusively on relative grounds which entail some kind of conflict between the parties with respect to the same trademark on the basis of the earlier rights. For instance, relative grounds are the following: disputed application is identical/similar to the trademark registered prior to the date of such an application; the trademark conflicts with a "well-known" trademark within the meaning of the Paris Convention, etc.

What other important aspect should be taken into account?

  • Please note that in order to file with the opposition it is necessary to pay an official fee of €320 (so-called opposition fee).
  • The details of the opposition must be clear. The most important is to indicate the above-mentioned relative grounds for opposition based on the earlier rights with detailed information of application/registration numbers, priority claims, representations of trademarks, etc. It is also necessary to clearly indicate all the details of the application being contested and the applicant's details and the remaining formalities.
  • The notice of opposition shall be submitted to the EUIPO in writing (including electronic means).
  • The language of opposition may be English, French, German, Italian or Spanish.

What is the short procedure for consideration of opposition?

If the time limits are respected and the official fee has been paid, the proceeding is conducted by the Opposition Division of EUIPO and typically includes an exchange of observations from both parties. If the parties have not settled their dispute amicably, the Opposition Division considers all the materials and renders the respective decision and either rejects the contested application in full or in part or rejects the opposition. If the opposition was successful, the respective application is subject to registration. The decision may be appealed against. It should be noted that based on the prescribed grounds the proceeding can be suspended.

Conclusion

To sum up, registration of a European trademark is an effective method of securing legal protection of a trademark as a valuable asset of an undertaking throughout the EU and to prevent its unauthorized use by any third parties. However, it is necessary to remember that within the process of registration of your trademark the opposition process can take place both with respect to your application and with respect to an application by a third party if it is connected with a trademark which conflicts with your trademark. In this case, whatever role you play, you will require professional competent advice which you can get through AGP & Co. Our firm will prepare all the necessary documents and submissions, ensure that the deadlines are met and in general do all the best in order to reach the most favourable outcome for our client. We will help you to choose the best strategy whether by negotiations or start the procedure of opposition or defense against such a procedure depending on the circumstances.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
AGP Law Firm | A.G. Paphitis & Co. LLC
AGP Law Firm | A.G. Paphitis & Co. LLC
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
AGP Law Firm | A.G. Paphitis & Co. LLC
AGP Law Firm | A.G. Paphitis & Co. LLC
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions