Oppositions and appeals
Procedural work (refusal responses, oppositions, appeals)
120 EUR / hour+ VAT
Estimate on request.
Last updated:
Disputes and litigation · Oppositions and appeals
Stop a lookalike mark or defend your application against an opposition
An opposition is the procedure in which the owner of an earlier mark asks the office to refuse a new application that resembles it. At OSIM you have 2 months from publication of the application, at EUIPO 3 months. Brand New IP files oppositions for you, defends your application when it is opposed and takes the case to an OSIM appeal or the EUIPO Boards of Appeal if the decision is wrong.
We file oppositions at OSIM and EUIPO against lookalike marks, answer oppositions you receive and take the case further on appeal when needed.
Procedural work (refusal responses, oppositions, appeals)120 EUR / hour + VAT
Your first consultation is free.
Who it’s for
This is for you if…
- You found out a competitor has filed a mark similar to yours
- Your trademark application has been opposed and you have a deadline to reply
- You disagree with an OSIM or EUIPO decision
- You have a watch subscription and we flagged a conflicting application
What’s included
What we do for you
- Assessing the likelihood of confusion: visual, phonetic and conceptual similarity, plus the goods and services compared
- Filing the opposition on time, with the grounds and the earlier marks relied on
- Arguments and evidence, including proof of use of the earlier mark if requested
- Answering an opposition against your application
- Negotiating with the other side: narrowing the list, a coexistence agreement, withdrawal
- Appeals at OSIM and before the EUIPO Boards of Appeal
- Oppositions outside the EU through our network of correspondent agents
How it works
The steps, one by one
Step 1: Assess the conflict
We compare the marks and the lists of goods and services and tell you how strong the case is before you pay any official fee.
Step 2: File the opposition or the reply
We file the opposition on time, or take over the defence of your opposed application.
Typical time: Deadline: 2 months at OSIM, 3 months at EUIPO
Step 3: Arguments and evidence
We build the arguments, collect evidence of use and answer the other side's observations.
Step 4: Try to settle
At EUIPO, the procedure starts with a cooling-off period for the parties to negotiate. We look for a friendly solution wherever it makes sense, because it usually costs less.
Step 5: Decision and appeal
If the decision is wrong, we file an appeal at OSIM or before the EUIPO Boards of Appeal.
Typical time: Roughly a few months to over a year
Oppositions and appeals
I want to oppose a trademark
Spotted an application that resembles your mark in the OSIM Official Industrial Property Bulletin or the EUIPO register? The deadline runs from publication: 2 months at OSIM, 3 months at EUIPO. Once it has passed, you can no longer oppose and are left with longer, more expensive routes such as an invalidity action.
What we do:
- check whether your earlier mark covers identical or similar goods or services;
- assess the likelihood of confusion and tell you honestly whether it's worth it;
- file the opposition and follow it through to the decision.
If your mark has been registered for more than 5 years, the applicant can ask you to prove you use it. Have dated invoices and materials ready.
Oppositions and appeals
My trademark has been opposed
An opposition doesn't mean you've lost the mark. It means the office will compare the two marks before deciding. The first thing we check is the reply deadline. The second: if the mark relied on against you has been registered for more than 5 years, we can request proof of use, and sometimes the opposition fails right there.
Then we pick the approach: argue there is no likelihood of confusion, narrow your list of goods and services to avoid overlap, or negotiate an agreement with the opponent. Filed the application yourself? We take over representation on the existing file.
Oppositions and appeals
Appeals at OSIM and EUIPO
If OSIM rejects your opposition or your application, you can challenge the decision with an appeal (contestație) decided by the OSIM Trademark Appeals Board. The deadline is short and runs from notification of the decision. The Board's ruling can then be challenged in court.
At EUIPO, the route is an appeal to the Boards of Appeal: the notice of appeal is due within 2 months of notification of the decision, and the statement of grounds within 4 months. For jurisdictions outside the EU we work with our network of correspondent agents.
Costs
What it costs
Official fees are paid to the office (OSIM, EUIPO or WIPO), carry no VAT and may change. Your first consultation is free.
Documents
What we need from you
- The number of the application you want to oppose, or of your opposed application
- The certificate or details of the earlier mark you rely on
- Evidence of use: invoices, catalogues, dated screenshots, advertising
- A power of attorney (we prepare it)
Frequently asked questions
Questions about oppositions and appeals
What is the opposition deadline at OSIM and EUIPO?
At OSIM, you file an opposition within 2 months of the application being published in the Official Industrial Property Bulletin. At EUIPO, the deadline is 3 months from publication of the EU trademark application. Neither deadline can be extended. If you miss it, you're left with longer actions such as an invalidity claim after registration. The offices don't warn you about similar filings, so someone has to watch the registers.
How do I find out if someone filed a trademark similar to mine?
OSIM and EUIPO won't notify you; watching the registers is the owner's job. You can search them yourself from time to time, but it's easy to miss an application that only sounds similar or carries the same meaning. Our watch subscription covers the OSIM, EUIPO and WIPO registers, and we flag conflicting applications while there is still time to oppose.
Can I negotiate with the party that opposed my trademark?
Yes, and it often pays off. At EUIPO, the procedure opens with a cooling-off period designed for exactly that. Typical outcomes are a narrower list of goods and services, a coexistence agreement setting out how each side uses its mark, or withdrawal of one application. A good settlement is faster and cheaper than a decision reached after several rounds of arguments.
How long does an opposition take?
It depends on the office and on how many rounds of arguments there are. As a rough guide, an OSIM opposition is usually decided within a few months, while an EUIPO opposition can take a year or more, especially if the parties extend the cooling-off period or proof of use is requested. We give you an estimate for your case once we've seen the file.
What is proof of use in an opposition?
If the mark an opposition is based on had been registered for at least 5 years, the applicant can ask the opponent to prove genuine use of it. Without evidence, the opposition fails for the goods or services that weren't used. Typical evidence includes invoices, catalogues, advertising and dated web pages showing the mark in use in the relevant territory.
How much does a trademark opposition cost?
Our fee is based on the hourly rate of 120 EUR plus VAT, and you get an estimate up front. The official opposition fee is paid separately to OSIM or EUIPO and carries no VAT; current amounts are on the official fees page. If you have a watch subscription, one opposition per year is included in the package, official fees excluded.
Related services
- Trademark watchA watch subscription covering OSIM, EUIPO and WIPO. We alert you, assess the risk and file oppositions on time.
- Provisional refusal responseWe analyse the OSIM or EUIPO refusal, build the arguments and evidence, and file the response on time. Also if you filed the application yourself.
- Cancellation and revocationWe seek invalidity of marks filed in bad faith or over earlier rights and revocation of marks unused for 5 years. And we defend your mark if it is attacked.
Let’s talk about your trademark.
The first consultation is free. We’ll tell you honestly what can be protected, how and what it costs, before you pay anything.