The trademark protection of the EU trademark Oktoberfest has been published, which the City of Munich successfully secured. The opposition period ends on 31 July 2021, otherwise licences are required – and payable – for the use of the word “Oktoberfest”. So how does an opposition procedure against an EU trademark proceed?
The city of Munich has already protected the term Oktoberfest as an EU trademark since autumn 2020 – we reported. Above all, trademark protection has also been expressly granted for the area of licensing, administration of copyrights in sound and images (analogue as well as digital) and the registration of domain names (all this is also found in Nice Class 45). Incidentally, the trademark protection also applies to hotels and guest houses as well as room reservations and rentals (parts from Nice Class 43).
Now the EU trademark Oktoberfest has been officially published since 1 May 2021, the opposition period therefore ends on 30.07.21. Anyone who has a reason to oppose the trademark protection of the Oktoberfest trademark should bring this forward now.
How do opposition proceedings against the EU trademark proceed?
Anyone is entitled to file an opposition against an EU trademark – i.e. also against the EU trademark Oktoberfest – if he feels that his own trademark right has been infringed by this trademark registration. A prerequisite for this is, however, that one has an earlier trademark right to this trademark Oktoberfest, which in legal terms is called an opposition sign.
An opposition sign can be:
- trademarks applied for or registered
- older company names as business signs
- and work titles
In the case of the EU trademark Oktoberfest, earlier opposition signs can be invoked if they have a clear relation to the term Oktoberfest.
Grounds for opposition proceedings against an EU trademark
Opposition proceedings against the EU trade mark Oktoberfest are only possible if one can justifiably claim a restriction with one’s own opposition mark. Recognised grounds are above all: likelihood of confusion with one’s own earlier mark (Art. 8 (1b) EUTMR), unfair advantage of the distinctive character or reputation of one’s own earlier mark (Art. 8 (5) EUTMR) and claiming the same goods and services as one’s own earlier mark (Art. 8 (1a) EUTMR).
In addition, a ground for opposition against an EU trademark may be that the opponent’s own sign is used in the course of trade with more than mere local significance (Art. 8(4) EUTMR). This can be a successful approach especially with regard to an opposition against the EU trademark Oktoberfest.
Time limits and costs in opposition proceedings
Opposition proceedings under trademark law must be conducted before the trade mark office which registered the trade mark, i.e. the European Trade Mark Office (EUIPO) for the EU trade mark Oktoberfest. Accordingly, the opposition against an EU trademark must also be filed according to the rules of the EU Trade Mark Regulation, not according to German trademark law.
The opposition must be filed in writing with the EUIPO, either using an online form or by letter or fax. In any case, the opposition must be filed within the opposition period and must also be paid within this period (costs for the opposition at EUIPO are currently EUR 320 opposition fee).
In principle, opposition proceedings under trade mark law are a good legal remedy to proceed relatively inexpensively and efficiently against an unauthorised trade mark registration. It is also possible to take civil action against a trademark infringement by means of a warning letter, an action for an injunction or an application for a preliminary injunction. However, such civil court proceedings are more protracted and also involve higher procedural costs.
Specifically, in the case of the EU trademark Oktoberfest, the opposition period ends on 31 July 2021, as the notice of opposition must be filed within three months of the publication of the EU trademark application in Part A of the EU Trade Marks Bulletin.
What happens if the opposition period has expired?
Basically, there are still two ways to file an opposition against a trade mark registration if the opposition period has already expired.
One can either apply for further processing or perhaps even for reinstatement of the opposition (according to Article 104 UMV). For both, one must fulfil formal requirements, some of which are very narrowly defined.
Trademark monitoring and screening
So, in any case, it is advisable to file an opposition within the opposition period. In practice, this is not at all easy for many, because it requires constant monitoring of new trademark publications. Such trademark monitoring or screening is time-consuming; it may therefore make sense to place this in professional hands. Our patent and trademark law firm also offers this service; please do not hesitate to contact us.
As you can see, we even offer so to say “free trademark screening” for the EU trademark Oktoberfest for the readers of our IP blog – similar as we do for the trademark Black Friday.
In any case, there are many possibilities of attack and defence in trademark opposition proceedings. Our lawyers have many years of experience in conducting trademark opposition proceedings before the DPMA and the EUIPO; this also includes a feeling for which arguments carry particular weight before the respective trademark office.
Please do not hesitate to contact us.