File an opposition

• a more recent trademark may cause confusion with a well-known mark, as referred to in Article 6bis of the Paris Convention;
• a more recent trademark is open to opposition by you as the owner of a protected geographical indication;
• a more recent trademark application was filed by an agent (a representative) in his or her own name without the authorisation of his or her client (proprietor of the trademark).

You can only file an opposition at BOIP against a Benelux trademark or an international trademark with protection in the Benelux. You must file an opposition against an EU trademark at EUIPO. Visit the EUIPO website

How?

Filing an opposition is a complex legal procedure. There are also costs involved. It is therefore important to conduct the procedure carefully and correctly. An expert in the field of intellectual property, for example an IP professional, can do this for you.

More about filing an opposition by an IP professional

Within what timeframe?

You can file an opposition within a period of two months, after the date on which the more recent trademark was published. The publication date can be found at the bottom of the copy of that trademark in the Trademarks Register. In the Register, you can also see whether it is still possible to file an opposition, as the opposition period is stated there too. You can find the general details of international trademarks in our Register, but not their publication date. These can be found in the WIPO Gazette.

Once the two-month opposition period has passed, you can still take action against the conflicting trademark by:

• initiating a cancellation procedure at BOIP, or
• objecting to the conflicting trademark through the courts.

To do that, it is best to retain the services of an IP professional.

Minimum requirements

We can only process your opposition if it has been filed within the opposition period and the requisite fees have been paid.

Furthermore, when filing the opposition, you must clearly state:

• Who the opponent is. An opposition can be filed by either a person or a company. You can also file an opposition if you have a trademark licence. To do so, you need the permission of the owner (holder) of the trademark. Your data must exactly match the data recorded in the Register;
• Against which trademark you are filing the opposition;
• On which earlier trademark your opposition is based?

Decision

Once we have examined an opposition filed, a decision is issued as soon as possible.

Possible consequences

1. The opponent is successful

• If the opponent is fully vindicated, we cannot register the more recent trademark, that was opposed, or we can only register it for those products and services that were not opposed. In this case, the defendant must pay the basic opposition fee (1,045 euro) to the opponent;
• If the opponent is partly vindicated, we only register the defendant's trademark for some of the products and services. In this case, neither party will be ordered to pay for the costs;
• If the trademark was based on an accelerated registration, we remove it from the Register, in whole or in part depending on the decision. We call this full or partial cancellation.

2. The defendant is succesful

• If we find fully against the opponent, we reject the opposition and register the defendant's trademark in the Register. In this case, the defendant must pay the basic opposition fee (1,045 euro) to the opponent;
• If the opponent is partially vindicated, we only register the defendant's trademark for some of the products and services. In this case, neither party will be ordered to pay for the costs.

The parties arrange payment of the 1,045 euro between themselves. Please note that BOIP has no role in this at all. The award of costs is enforceable. In other words, a bailiff can execute the BOIP opposition decision and, so, collect payment on behalf of the opponent or the defendant as applicable.