Three ways to win a trademark opposition

by | Oct 15, 2021 | General, Insights | 0 comments

The EU trademark office does not examine whether there are prior trademarks that prevent the registration of a later EU trademark. In many countries this is not the case. For example, in the US, China, Japan and Korea the trademark office refuses to register a trademark if somebody has earlier registered a similar trademark. In the EU, it is left for the owners of prior trademarks to oppose latter conflicting trademarks. Because the EU trademark office does not examine prior rights, a lot of conflicting marks get preliminarily accepted. This means that there are also more oppositions than in most other countries. Approximately 15% of EU trademark applications get opposed (vs about 1% in the US). The biggest confusion relating to oppositions is their meaning and significance. The opposition proceedings are not to decide whether the later trademark infringes on the earlier trademark and whether it can be used (or continue to be used). The only purpose of the opposition proceedings is to decide whether the later trademark can be registered. The fact that the opposition is successful does not automatically mean that the later trademark infringes on the earlier trademark and cannot be used. That’s a determination that can be made only by national courts. For the opponent to succeed in the opposition, it must establish that there is a “likelihood of confusion” between the trademarks. There is a likelihood of confusion when it could be assumed that two products with similar names are produced by the same company (or economically related companies). For example, Mars Inc. makes a chocolate bar called “Twix”. If you saw a chocolate bar called Twax, it would not be an unreasonable assumption that it’s also produced by Mars Inc. The main requirements for the likelihood of confusion are that the trademarks are similar and the goods/services are similar. In most cases, the opposition fails if you can convince that one of these two requirements is missing. The opponent has to establish that both requirements are fulfilled. Here’s three ways to win against an opposition. 1. Establish that the trademarks are not similar The similarity of trademarks is assessed from three aspects: phonetic similarity, visual similarity, and conceptual similarity. Trademarks are phonetically similar when they sound the same when said out loud. For example the words “hour” and “our” are phonetically identical, the words “vlog” and “flock” sound similar. Trademarks are visually similar when they look similar. For example the words GUGGI and CUCCI look similar. They are of similar length and contain identical or similar looking letters in similar locations. Trademarks are conceptually similar when they have a similar semantic meaning. For example, the words “BIG” and “LARGE” have a similar meaning. Whether there is an overall similarity depends on many factors. Here are four rules of thumb. 👉 Distinctive elements in the marks are given more emphasis. If there is overlap in them, it is more likely that the marks are similar. 👉 In most cases, the beginning of the mark is given more weight than the ending. If the beginnings are similar, it’s an indication that the marks will more likely be considered similar overall. 👉 If the earlier mark is included in the later mark in its entirety (trademark SKY is included in trademark SKYPE), the marks are usually similar. 👉 The shorter the marks are, the smaller the difference that is required that they are considered dissimilar. In short marks, relatively small differences might be enough to convince the EUIPO that the marks are not similar. If you cannot convince the EUIPO that the trademarks are dissimilar, you have to convince it that the goods and services are not similar. 2. Establish that the goods and services are not similar The similarity of the goods and services depends on many factors, such as – Nature of goods (milk and cheese are both dairy products) – Intended purpose (juice and milk are both for drinking) – Method of use (both books and newspapers are consumed by reading) – Complementarity (cigarettes cannot be smoked without lighters or matches) – Competition (wallpaper and paint are used to decorate walls) – Distribution channels (flower shops typically also sell congratulation cards) – Relevant public (golf clubs and golf magazines are directed at golfers) – The usual origin of the goods (leather belts and leather handbags) Particularly strong indicators of similarity are nature of goods, intended purpose, complementarity, competition and the usual origin. Sometimes we hear clients say that the products (or services) are not similar because they are in different classes. It is true that similar products are often grouped in the same class, but this does not mean that there are no other similar products or services in other classes. For example, beers (class 32) and ciders (class 33) are similar products, just like clothing (class 25) and bags (class 18). Conversely, there can also be very different products in the same class. For example, electric switches and diving equipment both belong to class 9. In most cases the fact that two products are in the same class indicates that they are similar, but it is certainly not conclusive. An independent analysis has to be conducted. If you can convince the EUIPO that either the trademarks are not similar or that the goods/services are not similar, the case is over and you win. Assessing the likelihood of confusion is an overall assessment of all factors, but if there is similarity between the marks and the goods and services in most cases there will also be likelihood of confusion and the opposition is successful. 3. Challenge the use or the prior trademark If the opponent’s trademark has been registered more than five years ago counting back from the application date of your trademark, it is subject to the “use requirement”. If the opponent’s trademark has not been used for the past five years, it will not have any effect in the proceedings. The opponent does not automatically have to prove the use of its trademark. You must make a request to the EUIPO that the opponent provides proof of use of its trademark. If the opponent has used their trademark for only some of the goods and services covered by the registration, the registration will be taken into account only to that extent. As a general rule, you should always request proof of use if the registration is more than 5 years old. The rules for evidence are very strict, and it is possible that the opponent does not manage to satisfy the use requirement even if their trademark has been used. For example, McDonald’s famously failed to establish the use of its trademark BIG MAC in 2019. Conclusion If you can attack the opponent in one of the three ways described above, you have a good chance of winning the opposition. Most oppositions do not proceed to the final decision, about 70% of all oppositions are resolved between the parties during the proceedings. In many cases there are other factors than those mentioned above that make settlement a viable option. A good attorney can be highly valuable in helping to bring the opposition to a speedy and satisfactory conclusion.

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