Trademark Oppositions: How to Defend Your Rights before the OEPM and the EUIPO
Protecting a brand goes far beyond simply registering it. When another company applies to register a mark that you consider too similar to yours, you have a legal mechanism to defend your brand identity: trademark opposition. In this comprehensive guide, we explain everything you need to know about this administrative procedure that can make the difference between maintaining your exclusivity in the market or losing it.
What is a Trademark Opposition?
An opposition is an administrative procedure that allows prior rights holders to challenge a trademark registration application when they believe its granting could infringe their rights or create confusion in the market. It is, essentially, your right to say "no" when someone tries to register something that is too similar to your trademark.
This defense mechanism exists both in Spain (before the Spanish Patent and Trademark Office – OEPM) and in Europe (before the European Union Intellectual Property Office – EUIPO), with similar procedures but with important nuances that you should know.
Critical Deadlines: The Time Factor
If there's one thing that's absolutely crucial in trademark oppositions, it's deadlines. Missing a deadline can mean losing your chance to defend your brand forever.
In Spain (OEPM)
Once the trademark application is published in the Official Bulletin of Industrial Property (BOPI), you have exactly 2 months to submit your objection. This deadline is non-extendable and begins counting from the day after publication.
In the European Union (EUIPO)
For European Union trademarks, the opposition period is extended to 3 months from the date of publication of the application in the European Union Trademark Bulletin. Although it is one month longer than in Spain, it is still a short period that requires swift action.
Professional adviceDon't wait until the last minute. Preparing a strong defense requires time to gather evidence, write compelling arguments, and collect the necessary documentation.
Who Can File an Objection?
Not just anyone can oppose the registration of a trademark. Standing to file an opposition is restricted to:
- Holders of previous trademarks or trade names and its duly authorized licensees
- Holders of prior rights other than trademarks, such as copyright, industrial designs, or image rights
- Holders of designations of origin or protected geographical indications
In all cases, you must prove that you have a prior right that could be affected by the new registration.
Reasons to Oppose: When Do You Have a Legal Basis?
For your objection to succeed, you need solid legal grounds. The most common grounds are:
1. Risk of Confusion (The Main Reason)
This is the most frequent reason for failure in competitive examinations. It occurs when three elements are present:
- Similarity between brandsThey don't need to be identical; it's enough that they are similar at a phonetic level (how they sound), visual level (how they look) or conceptual level (what they evoke).
- Similarity or identity in products/servicesBoth trademarks must be applied to identical or related products or services.
- real risk of public confusionThe average consumer might think that both brands come from the same business origin.
The OEPM and the EUIPO assess these elements jointly, applying the principle of interdependence: greater similarity in the signs can compensate for less similarity in the products, and vice versa.
2. Well-known or Renowned Brands
If your brand enjoys high market recognition, you can contest an infringement even when the products or services are not identical. Enhanced protection for well-known brands acknowledges that their reputation must be especially safeguarded.
3. Absolute Prohibitions
You can also oppose it if the applied-for trademark lacks distinctiveness, is descriptive, generic, or contrary to public order and morality.
The Step-by-Step Procedure
Phase 1: Presentation of the Opposition
The procedure begins with the submission of the written objection, which must include:
- Clear identification of the opponent's brand (your previous brand)
- Detailed explanation of the reasons for opposition
- Evidence that proves your previous rights
- Proof of payment of the official fee
Official rates:
- OEPM (Spain): 37.52 euros
- EUIPO (European Union): 320 euros
These fees cover only administrative costs. Professional fees for a trademark agent or specialized lawyer are additional.
Phase 2: Admission to Processing
The relevant office reviews the opposition to ensure it meets the formal requirements: timely filing, payment of the fee, and compliance with the established requirements. If everything is in order, it is accepted for processing and the trademark applicant is notified.
Phase 3: Reflection Period (EUIPO only)
At the EUIPO, there is a two-month reflection period (extendable to 24 months) during which the parties can negotiate an amicable agreement. This stage does not exist at the OEPM, where the procedure is more straightforward.
Phase 4: Contradictory Phase
This is where the real debate begins. The opponent has two months to complete their file with additional evidence. The applicant then has another two months to submit their arguments and defenses. Finally, the opponent can respond to these observations.
Phase 5: Usage Testing
If your previous trademark has been registered for more than five years, the applicant can require you to demonstrate that you have actually used it in the market. This is a powerful defensive tool: if you cannot prove actual use of your trademark, your opposition may be dismissed.
What constitutes valid proof of use? Commercial invoices, catalogs, advertising material, dated screenshots of your website, photographs of products or packaging, distribution contracts… Any document that demonstrates that your brand has been active in commerce in the last 5 years.
Phase 6: Resolution
After reviewing all the documentation, the office issues a decision. The possibilities are:
- Dismiss the oppositionThe applied-for trademark is granted in full.
- Partial estimateThe trademark is granted with limitations on certain products or services.
- Total estimateThe trademark application is completely denied.
In all cases, the losing party can appeal the decision.
Real Cases: Learning from Practice
Case 1: MARKZONA vs. MARKSONA
A company applied to register "MARKSONA" for marketing services in class 35. The owner of "MARKZONA", also registered for similar services, filed an opposition arguing:
- Phonetic similarityBoth brands are pronounced almost identically
- Visual similarityThey differed only by one letter in the central part
- Direct risk of confusionAn average consumer might associate both brands as coming from the same origin
ResultThe OEPM partially upheld the opposition, denying the trademark "MARKSONA" in class 35 but allowing its registration in another secondary class where there was no conflict.
LessonThe brands do not need to be identical. Phonetic and visual similarities are sufficient when the services are the same.
Case 2: WIND vs. FOUR WINDS
An international brand, "WIND," filed pre-opposition warnings against "FOUR WINDS," alleging that the common term "Wind" would cause confusion among consumers.
AnalysisAlthough they shared a word, the applicant argued that "Four Winds" had sufficient visual and conceptual differentiation, and that "wind" is a common, freely usable term.
ResultThe request was successful, demonstrating that sharing generic or common words does not always prevent coexistence, especially when the trademark set is clearly different.
LessonThe similarity analysis is done on the brand as a whole, not on isolated elements, especially if they are commonly used terms.
Case 3: Phonetic Similarities without Visual Identity
A recent case involved two mixed trademarks where the word elements differed by one letter, but the logos were completely distinct. The opponent alleged phonetic confusion; the applicant argued visual and conceptual differentiation.
ResultThe office considered that, despite the phonetic similarity, the significant visual differences and the distinct conceptual impact reduced the risk of confusion to acceptable levels.
LessonSimilarity analysis is multifactorial. A weakness in one aspect (phonetic) can be compensated for by strengths in others (visual, conceptual).
Strategies to Maximize Success
1. Act quickly but intelligently
The deadlines are short, but a poorly researched opposition has little chance of success. Dedicate sufficient time to:
- Analyze the real similarities in depth
- Gather solid evidence of your brand's usage
- Identify conflicting products/services accurately
- Drafting compelling legal arguments
2. Implement a Surveillance System
The best defense is early detection. Set up alerts for:
- New publications in the BOPI and the EUIPO Bulletin
- Applications that contain key terms from your brand
- Registrations in your sector of activity
Professional monitoring systems can automatically alert you when a potentially conflicting request appears.
3. Document the Use of Your Brand
Don't wait until they ask for proof of use. Start keeping an organized file now with:
- Dated commercial invoices
- Screenshots of your website (use archive.org to prove age)
- Advertising material with clear dates
- Contracts with distributors or licensees
- Product photos with your brand
- Sales statistics
RecommendationKeep examples for each calendar year. If proof of use is required, you will need to demonstrate use in at least two of the last five years.
4. Know the Strengths of Your Position
Before submitting an objection, honestly evaluate:
- Is your brand really in active use?
- Are the similarities objective or merely subjective?
- Do the products/services really overlap?
- Do you have sufficient documentary evidence?
An unfounded objection will not only be dismissed, but you could also be ordered to pay the costs of the proceedings (300 euros at the EUIPO).
5. Consider Negotiation
Not all competitive examinations should be resolved administratively. In many cases, a negotiated solution benefits both parties.
- Coexistence agreementsBoth brands coexist with geographical or product limitations
- Modification of the applicationThe applicant removes the conflicting classes
- Cross-licensingIn exceptional cases, mutual use agreements
Negotiation is especially recommended when the differences are not extreme and both parties have legitimacy in their use.
6. It has specialized advice
Trademark oppositions are technical procedures that require specialized knowledge of trademark law. A specialized intellectual property agent or lawyer can:
- Evaluate the actual viability of your opposition
- Write technically sound documents
- Manage all documentation and deadlines
- Represent you before the relevant offices
- Appeal adverse decisions if appropriate
The cost of professional advice is an investment that significantly increases your chances of success.
Associated Costs: How Much Does It Cost to Defend Your Brand?
Official Rates
- OEPM (Spain): 37.52 euros per competitive examination
- EUIPO (European Union)320 euros per competitive examination
Professional Fees
The fees of intellectual property agents or specialized lawyers vary depending on the complexity of the case, but usually range between:
- Simple competitive exams300-600 euros (analysis, writing and presentation)
- complex competitive exams: 800-1,500 euros (includes full follow-up, replicas and testing)
- Appeals: 250-400 euros additional
Court costs
If you lose your objection before the EUIPO, you could be ordered to pay €300 in costs to the other party. At the OEPM, each party usually bears its own costs.
Investment vs. Loss
Consider that the cost of defending your brand through opposition is infinitely less than:
- The cost of subsequent legal action for infringement (thousands of euros)
- Brand value loss due to dilution
- The impact on your customers who might be confused
Frequently Asked Questions
Can I object if my trademark is not registered?
Well-known but unregistered trademarks offer some protection, but your position will be much weaker. Registration is the strongest proof of your prior rights.
What happens if I don't object in time?
Once the opposition period has expired, the trademark will be granted. Your only subsequent recourse would be a cancellation proceeding, which is much more complex and costly.
Can I file an objection in several countries simultaneously?
Yes, you can file objections in Spain (OEPM), Europe (EUIPO) and any other country where you have prior rights and a conflicting application has been filed.
What happens if we're both right?
In these cases, the offices usually allow coexistence with limitations: each brand is registered for specific products/services that minimize the risk of confusion.
Can I withdraw my objection?
Yes, you can withdraw it at any time, especially if you reach an agreement with the other party. At the EUIPO, withdrawal within the reflection period does not result in an award of costs.
Conclusion: Opposition as a Strategic Tool
Trademark oppositions are not simply an administrative formality: they are a fundamental strategic tool for protecting one of your company's most valuable assets. A well-established brand represents years of investment in advertising, reputation, and customer trust. Allowing another company to use a similar mark can dilute that value and create confusion in the market.
The key to success in trademark oppositions lies in three pillars:
- Early detectionAn effective surveillance system
- Rapid actionStrict adherence to legal deadlines
- Solid argument: Convincing evidence and rigorous legal reasoning
At Marks & Us, we are registered Industrial Property Agents with over 20 years of experience handling trademark oppositions. Our team can help you:
- Implement brand monitoring systems
- Evaluate the feasibility of filing for or opposing a competitive examination
- Manage the entire procedure from beginning to end
- Appealing adverse decisions
- Negotiate coexistence agreements when appropriate
Marks & Us | Official Industrial Property Agents
C/ Ibáñez de Bilbao, 26 – 8 Dcha. 48009 BILBAO
Tel: +34 946 072 283 | Email: info@marksandus.com
www.marksandus.com
