Opposition proceedings
We take targeted action against conflicting new registrations before they become permanent in the registry.
Procedure for Handling Conflicting New Applications
The opposition proceeding is part of the field of trademark protection and enforcement. It begins within a clearly defined time frame following the publication of a new trademark and allows holders of prior rights to challenge the registration. In practice, it is therefore closely linked to trademark monitoring: Only those who identify new publications in a timely manner can effectively take advantage of the short deadlines.
Objections are based on prior rights:
- Earlier registered trademarks for identical or similar goods or services
- Likelihood of confusion due to similarity of the marks and closeness of the goods and services
- Increased distinctiveness or recognition of earlier trademarks
- Depending on the procedure, additional trademark rights with earlier priority dates
The appeal proceedings therefore clarify:
- Whether there is a conflict with prior rights
- Whether and to what extent the new registration is subject to challenge
- Whether a full or partial dismissal can be obtained
- Whether an amicable solution makes more sense than a decision
Key Issues in the Appeal Process
Similarity of Characters
What matters is the overall impression the characters convey in terms of sound, appearance, and meaning—not individual discrepancies.
Goods & Services
The decisive factor is whether the goods or services in question actually overlap or are economically related.
Use
For older trademarks, proof of genuine use may be required—with respect to the relevant goods or services.
Direction
Often, it is not a matter of "all or nothing," but rather a limitation of the scope of protection of the younger trademark.
Avoiding Risks
Formal and Strategic Errors
Objections that are insufficiently substantiated or filed late may reduce the chances of success or thwart them entirely.
Cost and Resource Allocation
Administrative proceedings also require time, attention, and strategic consideration—especially in international contexts.
How do we proceed?
Review of the New Application
Analysis of trademarks, list of goods and services, and priorities.
Reconciliation with the inventory
Assessment of one's own prior rights and their enforceability.
Strategic Decision
Assessment of the likelihood of success, interim results, or alternatives.
Conduct of Proceedings
Conducting the opposition proceedings, including briefs, evidence of use, and settlement negotiations.
In this way, the opposition proceeding becomes a targeted tool for managing trademark conflicts at an early stage and avoiding future disputes. Please contact us.
Related to the topic of strategy development
Delimitation
Negotiating mutually agreeable solutions
Customs and Border Seizure
Protection Against Product Piracy and Counterfeiting
Here's how we support you
Hit Check
We check whether the new application conflicts with prior rights.
Strategy & Vision
We determine whether a full-scale or partial attack is appropriate.
File an appeal
We will file the appeal within the deadline and provide a statement of grounds for it
Conduct of Proceedings
We handle the process, including questions regarding usage and settlement discussions.
Download PDF
An Overview of the Appeal Process.
Listen to the podcast
We'll discuss common pitfalls in trademark law.