Objection procedure

The opposition period is three months for both German trademarks and EU trademarks. However, the start of this period is calculated differently: In proceedings before the DPMA, the opposition period begins with the registration of the trademark, whereas in proceedings before the EUIPO it begins with the publication of the trademark application.

The most common case is that an opposition is filed based on an identical or similar trademark that claims protection for similar or identical goods or services. However, an opposition can also be based on other rights such as company trademarks.

When filing an objection, the objector must specify the law on which he or she bases his or her objection. Mistakes are often made here, which open up opportunities to effectively defend oneself against an objection that promises success in the matter.

There are various ways to respond to an objection.

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First of all, in many cases there are ways to work out an amicable solution and conclude an agreement that ensures the peaceful coexistence of the brands. In this way, the risk of litigation can be eliminated for both parties and costs can be kept low. This is particularly useful when the outcome of the proceedings is difficult to predict for both parties.
If the prospects of success are predominantly positive, it is advisable to actively defend the trademark. If, on the other hand, the prospects of success are rather negative, it is worth considering avoiding the dispute by withdrawing the application. In this case, however, sensible compromises (partial withdrawal, conversion periods, etc.) can often still be negotiated.
In practice, it often happens that owners file an objection based on rights that are older than the contested trademark, but which are themselves vulnerable to challenge. A precise analysis of the register situation and decision-making practice repeatedly opens up opportunities to turn the tables and take action against the contested trademark in keeping with the motto “attack is the best defense”.

The likelihood of confusion between two trademarks is assessed based on three main criteria: How similar are the signs? How similar are the goods and services in question? And how distinctive is the older trademark?

What initially sounds simple quickly becomes complicated. The devil is in the details. How do you actually judge whether signs are similar in the sense of trademark law? What criteria are used to determine product similarity? What is distinctiveness? And how do these three elements relate to one another? These and many other questions relevant to decisions are regularly assessed incorrectly by lawyers who are inexperienced in trademark law. It is therefore highly recommended that you have the question of the likelihood of confusion assessed by a specialist lawyer who is experienced in trademark law.

Even if your trademark is identical to an older trademark or is likely to be confused with it, this does not mean that you have lost the opposition proceedings. There are numerous ways to successfully defend yourself, regardless of the question of trademark infringement. For example, you can challenge the protectability of the opposing trademark, raise a use defense or assert an older counter-right. With these and similar steps, even a case that was thought to be lost can still be turned around.

In opposition proceedings before the DPMA, it is usual for costs to be offset against each other. This means that each party bears its own costs. And in proceedings before the EUIPO, a claim for reimbursement of costs is often not enforced for economic reasons. In order to keep the cost risk low and transparent for you, we therefore work with previously agreed fixed prices.