Introduction
Trademark oppositions are common, especially in today’s competitive marketplace, but they don’t have to spell the end of your application. Often, even opponents are reluctant to engage in prolonged and expensive litigation. With the right strategy and expert guidance, oppositions and disputes can often be resolved amicably through negotiations or coexistence agreements, allowing both parties to move forward successfully. This Guide provides everything you need to know about the process of defending your trademark application.
You can find an overview of how the trademark registration and opposition process work HERE.
Your options explained
Trademark opposition can feel daunting, but in most cases, there are clear strategies to resolve issues effectively, without escalating to a costly legal battle. In most cases, the optimal strategy is to start with co-existence negotiations and then switch to defending your trademark in opposition or withdraw the application based on new developments.
Negotiate co-existence
Engage with the counterparty to reach an amicable resolution, allowing both parties to operate without conflict. This approach offers great flexibility and balance between time, cost, risk, and potential for favorable outcomes.
When to use: Whenever we can offer a reasonable proposal for coexistence that allows both parties to operate without conflict and none of a more lightweight strategy is viable.
Estimated cost: 495-1140 EUR (or USD/GBP equivalent) depending on complexity (split into two payments based on steps required).
Success rate: Approximately 70% if the business offerings are unrelated. In more complex cases the success rate is hardly predictable, but the closer their goods or services are to yours, the less willing they are to co-exist.
Timeline: Typically takes 2-3 months to resolve the matter.
Learn more about our Negotiation strategy process HERE.
Defend in opposition
If negotiations fail or are not pursued, defending your trademark in formal opposition proceedings is the next option. This involves presenting legal arguments and evidence to the trademark office to demonstrate why your trademark should be registered. Sometimes it is the only chance to secure your trademark but with higher costs, lower success rate, and longer timelines.
When to use: If the opponent rejects coexistence or negotiation fails and the strength of your case makes formal defense worthwhile.
Estimated cost: 1500 EUR (or USD/GBP equivalent) per one round of substantive submission (usually 1-2 actions are required).
Success rate: Usually significantly lower than negotiation; depends on case strength.
Timeline: Typically takes 1 year.
Withdraw the trademark
If neither negotiation nor defense is viable, withdrawing the application may be the most practical option. However, this forfeits your claim to the trademark and may result in rebranding in certain cases.
When to use: If the opponent’s claim is strong and rebranding is feasible.
Cost: 150 EUR (or USD/GBP equivalent).
Timeline: 1 week.
Other viable strategies
Option | When to use | What it involves | Estimated cost | Success rate | Timeline |
|---|---|---|---|---|---|
Limiting the scope of the application | If the opposition targets specific goods/services that are non-critical to your business. | Amending your trademark application to exclude overlapping goods/services. | €150 or USD/GBP equivalent | Moderate - depends on business impact. | 1-2 weeks |
Refusing all opponent’s claims in the EU | If the opponent’s claim is weak. If the opposition is unlikely to succeed even without a defense. | Filing no active defense and relying on procedural standards. Monitoring proceedings. | €0 | High - depends on opponent’s case strength. | ~1 year |
Waiting for opponent’s action | If no formal opposition has been filed. If you suspect the opponent may not escalate further. | Monitoring the opposition deadline. Responding only if formal opposition is filed. | €0 | Not applicable. | Until opposition deadline. |