The trademark opposition procedure

• IP-IT
• Private Clients
• SME

Trademark owners can be massively weakened by new applications for similar or identical younger trademarks. How can the dilution of the existing trademark be prevented or the potential infringement of one’s own trademark be prevented? The following article shows how trademark owners can defend themselves.

Every trademark owner is responsible for monitoring and defending their trademark once it has been registered. Trademark defense as a measure to defend against infringements requires monitoring, which is then followed by an offensive in an emergency. As part of professional monitoring, already applications in the relevant registers can be constantly checked. In this way, any conflicting new trademark applications can be identified at an early stage. Once the “danger” has been identified, the subsequent trademark defense strategy can be tackled.

Warning letter

In defending a trademark, it is important to react quickly, in particular by issuing a warning notice to the owner of the younger trademark. The warning letter contains a request to partially or completely cancel the younger trademark. In certain cases, conflicts can also be settled by means of a contractual agreement with the interfering party (so-called co-existence agreement), in which it is agreed how the conflicting trademarks can coexist and where their boundaries are and for which goods and services they claim protection.

Opposition procedure in Switzerland

If no agreement is reached in the context of an application for a third-party trademark, opposition proceedings may be unavoidable. This is a procedure under applicable trademark law. It is intended to be simple, quick and inexpensive.

Owners of an earlier trademark can file an opposition against a later trademark within three months of the registration of the later trademark in the Swiss trademark register asserting their “priority of filing”.

The success of an opposition depends to a large extent on whether the younger mark is sufficiently distinctive not to give rise to a likelihood of confusion. The owner of an earlier trademark can object in the context of the opposition that a later trademark is identical or similar and is intended for similar goods or services, so that a likelihood of confusion arises. However, the following also applies to the earlier trademark: the stronger the distinctive character of a trademark, the stronger the trademark is protected against younger trademarks.

If the opposition is successful, the younger trademark will be partially or completely deleted from the trademark register. Partial means that the deletion is limited to individual goods and services that may give rise to a likelihood of confusion.

The losing party in opposition proceedings must generally bear the costs of the proceedings. The allocation of costs takes into account whether a warning letter was issued prior to the opposition proceedings.

International Registrations

Often, additional international trademark registrations are based on a so-called basic trademark. This is possible with the help of the international agreement, the Madrid Protocol, for numerous countries that have joined the agreement. If trademark owners see a potential infringement of their internationally registered trademark through a new application of a younger trademark due to overlaps in the geographical scope of protection of their international registration, they can consider the same measures (warning letter, opposition proceedings) as described above. However, a potential opposition against an international registration and/or national registration must be filed in the respective country or region (e.g. EU) in which there is a threat of potential infringement. In these countries, too, it can be claimed in a simplified procedure that a later trademark is identical or similar and intended for similar goods or services, so that there is a likelihood of confusion. In many countries, a three month opposition period is applicable, but there are exceptions. For example, the opposition period in the UK is two months since the publication of the application, with the option to file an extension of the opposition period by one month. The deadlines and requirements in a specific country must be checked on a case-by-case basis. Certain countries (e.g. Canada) even have a “pre-grant opposition” system, which means that an opposition must be filed before the official registration of the trademark in the national trademark register.

We will be happy to advise you if you have any questions.

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