Reaching an agreement in trademark opposition proceedings. Withdrawal of an opposition.

Many trademarks have been registered over the years and more and more applications for trademarks are submitted every day. This often leads to a conflict of interests between different competitors, as they sometimes apply for registration similar to earlier trademarks, which leads to opposition from the owner of the earlier mark. Before the so-called adversarial part of the opposition proceedings begins, the parties are provided a three-month period to reach an agreement. This period may be extended once by three months upon a written request signed by the parties submitted before the expiry of the relevant three-month period. When the parties submit an agreement in time, a decision is taken to terminate the opposition proceedings. This means that an adversarial part of the opposition proceedings may not take place at all if the parties succeed in agreeing within the time allowed to reach an agreement or if the proprietor of the earlier mark restricts the list of goods and/or services in the application and the opponent withdraws the opposition.

The purpose of this publication is to provide more information on reaching an agreement in opposition proceedings and the withdrawal of the opposition.

When should you contact the opponent or his industrial property representative?

It is important to note that the applicant of the later trademark is the one who has an interest in reaching an agreement and withdrawing the opposition, so he should initiate contact with the opponent within the time allowed for concluding an agreement. It is advisable to contact the opponent as soon as possible, as most often the communication is with the opponent’s industrial property representative and takes from a few days to a few weeks to receive a response after the first communication has been sent to the opponent. Additionally, if the opponent is willing to withdraw the opposition, it also takes time to agree on the conditions under which both trademarks can coexist on the market and those conditions to be fulfilled.

How should the opponent or his industrial property representative be contacted?

It is advisable to keep your communication in writing, for which purpose you can send a letter to the opponent and his industrial property representative by mail, e-mail, and/or fax. I recommend that you use all means of communication for which you have information. What do I mean? If you have a fax, e-mail address, and postal address of the opponent and/or his industrial property representative, then my advice is to send the first communication both by e-mail and by fax and to the postal address by courier. Subsequently, when you receive a response, you can communicate by e-mail for convenience.

Under what conditions can the opponent agree to withdraw his opposition and the two trademarks coexist on the market?

In the event that the opponent is ready to reach an agreement and withdraw his opposition, the applicant of the later mark is most often required to restrict the list of the goods and/or services in the application. Once proof of the restriction is provided, the opponent withdraws the opposition.

Additionally, it is common practice when the opposition is filed against an application for registration of a European Union trademark, the opponent to require the applicant of the later trademark to undertake not to use the trademark in certain countries indicated by the opponent. If the applicant agrees with this condition, most often this obligation is fulfilled by signing a declaration by the applicant.

Also, where the later mark contains, in addition to a verbal and figurative element, the applicant may be required to use the mark always with the verbal and the figurative element in order for the opposition to be withdrawn.

As I mentioned above, the applicant of the trademark against which opposition is filed may fulfill the obligations that the opponent has requested to be fulfilled, by signing a declaration or by signing the so-called trademark co-existence agreement between the two parties, which agreement shall determine the scope of use of the trademarks in order to avoid confusion or conflict. This agreement allows the parties to lay down rules by which the marks may coexist. You can read detailed information about the trademark co-existence agreements in the article “Trademark co-existence agreements“.

Due to the above-mentioned peculiarities, it is advisable to seek the assistance of an intellectual property specialist with experience in this matter when negotiating an agreement in trademark opposition proceedings, as well as in restricting the list of goods and/or services in trademark application and drafting of trademark co-existence agreements. The team of the law firm of Krasimira Kadieva will gladly assist you in negotiating an agreement in opposition proceedings by providing professional advice and preparing all necessary documents.



Legal Disclaimer: This material prepared by Krasimira Kadieva aims to describe the procedure in reaching an agreement in trademark opposition proceedings and the withdrawal of the opposition. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of an intellectual property specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers comprehensive analysis and strategy for the effective protection of trademarks as objects of industrial property, both at the time of registration and in violation of the rights thereto. The IP lawyer in Bulgaria Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.

error: Content is protected !!