Opposition to the registration of a trade mark

Opposition to the registration of a trade mark is the administrative procedure by which the owner of an earlier right asks the office to reject, in whole or in part, an application for registration of a trade mark that would infringe that right. Under French law, it is provided for in Article L. 712-4 of the French Intellectual Property Code and takes place before INPI, within two months following publication of the application. For the EU trade mark, it is governed by Article 46 of Regulation (EU) 2017/1001 and is filed with the EUIPO within three months of publication.

Earlier rights that may be relied on

An opposition may be based on an earlier trade mark, registered or applied for, including a well-known mark, on a trade mark with a reputation, on a company name, trade name, shop sign or domain name whose scope is not merely local, on a geographical indication, on the name of a local authority or public body, and on a trade mark filed by an agent or representative of the owner without its authorisation. Since the 2019 reform, a single opposition may rely on several earlier rights. Copyright, designs and personality rights, by contrast, can be relied on only by way of an invalidity action.

Course of the procedure

The opposition is filed online, by a notice identifying the earlier right and the goods and services targeted, which must be supplemented within one month by a statement of grounds. It is notified to the applicant, and an inter partes phase begins, during which the parties exchange observations. The applicant may require the opponent to prove genuine use of the earlier trade mark where it has been registered for more than five years, and the opposition is rejected for the goods and services for which use is not shown. At the end of the proceedings, the Director General of INPI rules by a reasoned decision, which rejects the application in whole or in part or rejects the opposition. The decision may be appealed to the court of appeal within one month.

Assessment of the merits

An opposition based on an earlier trade mark succeeds where the signs and the goods are identical or, failing that, where there is a likelihood of confusion on the part of the public, assessed globally by reference to the similarity of the signs, the similarity of the goods and services and the distinctiveness of the earlier mark. An opposition based on a trade mark with a reputation does not require a likelihood of confusion, but a link between the signs and an unfair advantage or detriment. INPI does not assess the validity of the earlier trade mark, which can be challenged only by separate proceedings.

Key points

Opposition allows the owner of an earlier right to have a trade mark application rejected within two months of its publication in France and within three months before the EUIPO, in a fast inter partes procedure that does not involve the courts. It presupposes monitoring of publications and, for an earlier trade mark more than five years old, evidence of genuine use. Set up a watch on filings, gather evidence of use before acting and favour negotiating a coexistence where the risk is partial.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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