According to statistics from the European Union Intellectual Property Office (EUIPO), thousands of disputes arise every year concerning European Union trademarks (EUTMs) and registered EU designs.
These disputes may arise during the trademark registration process or concern the validity of intellectual property rights after registration.
How Many Trademark and Design Disputes Does EUIPO Handle?
According to the reported EUIPO statistics, more than 23,000 trademark and design disputes involving opposing parties arise annually.
First-Instance Proceedings
At first instance, EUIPO handles approximately:
- 18,000 opposition proceedings against trademark applications.
- 1,200 trademark cancellation applications.
- 700 design invalidity proceedings.
Appeals Before the EUIPO Boards of Appeal
At second instance, approximately 2,400 cases are referred to the EUIPO Boards of Appeal for examination.
These figures show that disputes are a regular part of the European Union trademark and design protection system.
Therefore, applicants should be prepared for the possibility of becoming involved in legal proceedings.
When Can EU Trademark Disputes Arise?
European Union trademark disputes generally occur at two main stages: before and after registration.
Opposition Before Trademark Registration
An opposition is an objection filed by a third party against a European Union trademark application.
Its purpose is to prevent the registration of a trademark that may conflict with earlier rights.
The opposition procedure follows several steps:
- An applicant files a European Union trademark application.
- EUIPO publishes the application.
- Third parties have three months from publication to file an opposition.
- If a third party files an opposition within this period, opposition proceedings begin.
- If no opposition is filed, the application can proceed to registration, provided it meets all other requirements.
Therefore, opposition proceedings take place before the trademark is registered.
Cancellation After Trademark Registration
A European Union trademark may also face legal challenges after registration.
For example, EUIPO may register a trademark because no third party filed an opposition during the application process.
However, registration does not necessarily prevent subsequent challenges to the trademark’s validity.
An eligible party may request the cancellation of a registered trademark on applicable legal grounds.
Consequently, cancellation proceedings represent another major category of European Union trademark disputes.
How Does EUIPO Handle European Union Design Disputes?
The registration procedure for a European Union design differs from that of a trademark.
Unlike trademark applications, EU design applications are not subject to a pre-registration opposition procedure.
As a result, third parties cannot oppose a design application during the registration process.
Instead, they may challenge the validity of a registered EU design through invalidity proceedings after registration.
This procedure provides a mechanism for challenging designs that do not meet the applicable legal requirements.
Professional Representation in EU Trademark and Design Disputes
The IP Consulting team has extensive experience representing clients in disputes involving European Union trademarks and designs.
Our work includes trademark opposition proceedings, cancellation requests, and design invalidity proceedings.
Professional representation can help applicants and rights holders understand the relevant procedures and protect their intellectual property rights.
To learn more about our experience and previous cases, visit the IP Consulting blog.