May 7, 2019
‘Relative Grounds’ for Refusal of a EUTM Application
Once the EUTM application is approved on the absolute grounds, it will be published in the EUTM Bulletin for opposition for a period of 3 months.
‘Relative Grounds’ for refusal
Opposition to the EUTM application shall rely on the relative grounds for refusal. Article 8 of European Union trade mark Rules (“EUTMR”) stipulates the relative grounds for refusal as follows:-
- Upon opposition by the proprietor of earlier trademarks (“Earlier Trade Marks”), the trademark applied for shall not be registered:
(a) if it is identical with the earlier trademark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trademark is protected;
(b) if because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected; the likelihood of confusion includes the likelihood of association with the earlier trademark.
For the purposes of opposition, “Earlier Trade Marks” means:
- Community trade marks;
- Registered trade marks in Member State (also applications), including IR marks
- Non-registered trade marks (insofar protected by national law)
- Well-known marks
- Non-registered signs (insofar protected by national law), e.g. company or trade name, titles of publications
- Upon opposition by the proprietor of the trademark, a trademark shall not be registered where an agent or representative of the proprietor of the trademark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.
- Upon opposition by the proprietor of a non-registered trademark or of another sign used in the course of trade of more than mere local significance, the trademark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign.
- Furthermore, upon opposition by the proprietor of Earlier Trade Marks, the trademark applied for shall not be registered where it is identical with or similar to the earlier trademark and is to be registered for goods or services which are not similar to those for which the earlier trademark is registered, wherein the case of an earlier Community trademark, the trademark has a reputation in the Community and, in the case of an earlier national trademark, the trademark has a reputation in the Member State concerned and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.
- Upon opposition by any person authorized under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications: