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Trademark opposition and invalidity proceedings

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Trademark opposition: effectively defend your intellectual property rights

Protecting a trademark is crucial for any business seeking to preserve its identity, reputation and investments. However, a new application may conflict with your earlier rights. In such situations, trademark opposition and trademark invalidity proceedings are two essential legal tools for defending your interests.

At Dreyfus, our team guides you through these complex procedures and helps protect your intangible assets.

Why is trademark opposition essential?

Trademark opposition applies when a third party files a mark that may create a likelihood of confusion with yours. It allows you to challenge the application before the mark is registered, helping prevent future disputes and commercial harm.

Main grounds for trademark opposition:

  • Likelihood of confusion: significant similarity between two marks could mislead consumers.
  • Damage to reputation: the contested mark unfairly takes advantage of the reputation of your trademark.
  • Bad faith: the mark was filed to benefit from your reputation or harm your business.

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What is a trademark invalidity action?

Unlike opposition, a trademark invalidity action targets a mark that has already been registered. It may be brought where valid grounds show that the mark should not have received legal protection.

Grounds for invalidity:

  • Lack of distinctiveness: the mark is generic or descriptive and cannot distinguish the relevant goods or services.
  • Infringement of earlier rights: the mark conflicts with rights that are already protected.
  • Bad-faith filing: the mark was filed for an improper or harmful purpose.
  • Failure to comply with legal requirements: the mark breaches the absolute or relative grounds for validity that apply in the relevant jurisdiction.

Consequences of invalidity:

If the action succeeds, the trademark registration is declared invalid in whole or in part. Invalidity generally has retroactive effect, meaning that the registration is treated as if it had never produced legal effects.

Whether you are a start-up, an SME, a large corporation or an individual creator, it is advisable to register your trademark before a conflict arises.

How do these procedures work?

1. Trademark opposition

  • Strict time limits: in France, the opposition must be filed within two months of publication in the BOPI. For an EU trademark application, the period is three months from publication by the EUIPO.
  • Administrative procedure: conducted before the INPI in France or the EUIPO at European Union level.
  • Possible outcome: total or partial refusal of the contested application.

2. Trademark invalidity

  • Post-registration remedy: the action challenges a registered trademark.
  • Competent authority: the INPI for French trademarks and the EUIPO for EU trademarks, with court proceedings remaining possible in certain disputes.
  • Time limits: applications are generally not subject to a limitation period, although acquiescence in the good-faith use of a later mark for five consecutive years can bar an action based on earlier rights.
  • Possible outcome: total or partial invalidity of the registered mark, generally with retroactive effect.

Dreyfus: your partner in defending your trademarks

We understand how important it is to protect your trademarks against unfair competition, parasitic conduct and other wrongful acts by market operators. Our expertise includes:

  • Strategic analysis: assessing the risks and opportunities associated with an opposition or invalidity action.
  • Drafting and filing oppositions: preparing detailed arguments and managing proceedings before the competent authorities.
  • Legal support: representation before offices and courts, together with negotiations with the other party.
  • Claims for compensation: seeking damages for the harm suffered where the legal conditions are met.

Comparison: opposition vs invalidity

Trademark opposition

  • Applies before the contested trademark is registered.
  • Handled by administrative authorities such as the INPI in France or the EUIPO at European Union level.
  • Must be filed within a strict period, two months in France and three months for an EU trademark application.
  • Can block all or part of an application based on earlier rights, including a likelihood of confusion or damage to a reputed trademark.
  • Usually faster and less costly than court litigation.

Trademark invalidity

  • Applies after the contested trademark has been registered.
  • Handled by the INPI for French trademarks and the EUIPO for EU trademarks, or by competent courts in certain disputes.
  • Is generally not subject to a limitation period, subject to the rules on acquiescence.
  • Can invalidate all or part of a registration on absolute grounds or because it infringes earlier rights.
  • May involve a longer and more complex procedure, but remains essential when the conflicting mark is already registered.
French trademark opposition proceedings
European Union trademark opposition proceedings

Comprehensive expertise to protect your trademarks

Dreyfus provides clients with internationally recognised trademark expertise.

  • Trademark registration

    We handle the administrative and legal steps required to register your trademarks and secure effective protection.

  • Trademark monitoring

    Our proactive monitoring service detects unauthorised use and conflicting filings so that you can respond quickly and effectively.

  • Trademark disputes

    We represent clients in opposition and invalidity proceedings, as well as disputes involving unauthorised trademark use.

  • Strategy and portfolio management

    We provide audits and strategic advice to optimise and enhance your trademark portfolio, including licensing negotiations.

  • International trademark protection

    We coordinate trademark registration and protection internationally, supported by global monitoring of fraudulent and conflicting uses.

  • Trademark legal advice

    Our experts provide tailored strategic advice, training and ongoing legal monitoring to support compliance and trademark protection.

FAQ on trademark opposition for businesses

What are the advantages of opposition over invalidity proceedings?

Opposition proceedings are faster and less costly because they take place within an administrative framework. However, invalidity proceedings remain an essential remedy where a conflicting trademark has already been registered.

How can unfair competition be proved in this context?

The evidence must establish a causal link between the wrongful act and the harm suffered, such as a loss of customers or damage to your reputation.

What do these procedures cost?

The fees depend on the complexity of the matter and the competent jurisdiction. Contact us for a tailored estimate.

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