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Avoid pitfalls in trademark oppositions

In 2004, the trademark opposition procedure was introduced in Benelux. Now, six years and over 470 (appeal) decisions later, it might be useful to consider some do”s and don”ts.

When filing an opposition, one is advised to base it on all goods in the prior mark and direct it towards all goods in the mark applied for, as that will increase the pressure on the other side when entering negotiations. When filing arguments, the basis can be limited easily. A closer look at the scope later on may be useful for increasing the chances of a full win and a consequent full refund of the opposition fees.

It should be noted that a Benelux opposition can only be based upon prior (and registered) trademark rights or on a well known mark (article 6bis Paris Convention). In multiple decisions, all claims based upon copyrights, lapsed trade mark rights and bad faith claims were rejected.

As the time frames involved are quite short and, apart from the cooling-off term, cannot be extended, it is advised to have a clear overview of the rights involved and the value thereof as soon as possible. In the event that the opponent relies on a prior mark that is subject to the use requirement, he may need to support this claim in only a few months time. Prior decisions show that the Benelux Office has a rather strict policy in judging evidence of use. It turns out that if the Office has doubts, the claim is usually rejected.

With regard to prior rights that are subject to the use requirement, strategy is of great importance. As both parties only have one round to file arguments, it is advisable for the applicant to only request such proof of use first and file counter arguments after the proof of use has been filed. Then, the opponent cannot react to arguments filed on behalf of the applicant in response to the filing of the evidence.

The above points once more show the importance of having a trademark attorney assisting you. He or she knows all the ins and outs of the procedure. Then, the procedure can be entered with confidence and the chances of getting the desired result (either a settlement or win) are maximized.