Opposition to trademark registration - art. 46 EUTM Regulation

Comments by: Paweł Wrześniewski


REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 14 June 2017 on the European Union trade mark


Art. 46



1. Within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

(a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5);

(b) by the proprietors of trade marks referred to in Article 8(3);

(c) by the proprietors of earlier marks or signs referred to in Article 8(4) and by persons authorised under the relevant national law to exercise these rights;

(d) by the persons authorised under the relevant Union legislation or national law to exercise the rights referred to in Article 8(6).

2. Notice of opposition to registration of the trade mark may also be given, subject to the conditions laid down in paragraph 1, in the event of the publication of an amended application in accordance with the second sentence of Article 49(2).

3. Opposition shall be expressed in writing, and shall specify the grounds on which it is made. It shall not be considered as duly entered until the opposition fee has been paid.

4. Within a period to be fixed by the Office, the opponent may submit facts, evidence and arguments in support of his case.

[Legal note]

'Following the publication of an EU trade mark application' is because according to art. 44.1 eutm if the conditions which the application for an EU trade mark is required to satisfy have been fulfilled, the application shall be published for the purposes of Article 46. So the procedure is like this: firstly EUIPO cheques for absolute grounds for refusal (art. 7 eutm), then publishes the application for interested parties to oppose it on relative grounds for refusal (art. 8 eutm).

The place to make EU trade mark application publically known is European Union Trade Marks Bulletin. The calculation of three months from art. 46.1 eutm shall start on the day following the day of publication.

Not all situations mentioned in art. 8.1 eutm have to materialize at the same time to exercise a right to oppose registration, it is enough to have only one of them.

Changing the application is generally inadmissible. According to Article 49.2 eutm however EU trade mark application may be amended, upon request of the applicant, only by correcting the name and address of the applicant, errors of wording or of copying, or obvious mistakes, provided that such correction does not substantially change the trade mark or extend the list of goods or services.

The notice of opposition shall be filed in one of the languages of the Office. These languages are English, French, German, Italian and Spanish.

The opposition fee mentioned in art. 46.3 is 320 EUR. It will be too late if the opposition fee is paid after the expiry of the opposition period (ie. 3 months). The Office will refund it to the opposing party. And that is it.

Where the application is withdrawn or restricted to goods or services against which the opposition is not directed (see withdrawal or restriction according to art. 49 eutm), or the Office is informed about a settlement between the parties, or the application is rejected in parallel proceedings, the opposition proceedings shall be closed. Where the applicant restricts the application by deleting some of the goods or services against which the opposition is directed, the Office shall invite the opposing party to state as it may specify, whether it maintains the opposition, and if so, against which of the remaining goods or services. Where the opposing party withdraws the opposition in light of the restriction, the opposition proceedings shall be closed. In such a cases there is a chance the opposition fee will be refunded!

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[last update: 10th of April 2020]