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Jan 2026

Trademark registration – someone has filed an opposition against your trademark, what now?

Every brand has its value, associated with reputation, customer trust and recognizability. For its owner to be able to protect it fully, merely using a logo or name is not enough. Formal confirmation of this protection through trademark registration is also important.

You can register a trademark at various levels:

National trademark: registered with the industrial property office of a specific country (e.g. in Slovakia, this is the Industrial Property Office of the Slovak Republic, IPO SR, which also maintains the trademark register) – protects the registered sign (your brand, name or logo) only within the territory of that country.
European Union trademark (EU TM): one application, one registration, protection in all 27 EU Member States. Registration of the trademark in question is carried out and the EU TM trademark register is managed by the European Union Intellectual Property Office (EUIPO).
International Trademark: makes it possible to extend trademark protection to several countries at once through the World Intellectual Property Organization (WIPO). Importantly, you must already be the owner of a national or EU TM trademark.

If you would like to learn more about trademarks, their types and the registration process, click on the relevant point:

In this article, we will look at how registration works and what happens if someone files an opposition against your application. For the purposes of this article, we have chosen an application at EU level, since the European trademark is becoming increasingly popular among entrepreneurs who also operate beyond Slovakia’s borders or plan to expand, or wish to prepare their company for sale or the entry of a strategic investor into it.

Why deal with a trademark at EU level?

If you do business not only in Slovakia but also in other European countries (even just one EU country other than the Slovak Republic is sufficient), or if you plan to expand your business into foreign markets in the future, registration European trademark may be much more practical for you than national registration.

By registering at European Union level, you obtain protection in a single application in all 27 EU Member States. This means you do not have to submit separate applications in each country or pay fees separately. This means less administration, lower costs and greater legal certainty within the defined territory of operation.

At the same time, this solution is suitable not only for large brands but also for smaller entrepreneurs: e-shops, startups and family businesses that sell abroad or cooperate with partners in other countries.

Another advantage is that an EU trademark has a unitary effect, meaning that once registered, it is valid automatically in all Member States. On the other hand, if there is a problem with it (for example, an opposition in one country), it affects the entire registration, which is why it is good to be prepared for such situations.

How does EU trademark registration work?

The European trademark registration process is not complicated, but it is worth knowing what to expect in order to avoid unnecessary mistakes or delays. Due to the complexity of the steps you must take to verify the registrability of the sign as a trademark, we recommend obtaining qualified representation.

Filing the application

The application is filed directly with EUIPO, most often electronically. A trademark application must primarily contain the applicant’s identification, a representation of the sign intended to constitute the trademark (a word, logo, but also a sound or hologram) and a list of the goods and services for which protection is sought.

After filing, the relevant fees must be paid. If the SME FUND grant scheme is open and you meet the conditions for obtaining it, we recommend applying for it.

Formal and substantive examination

Formal examination: EUIPO checks whether the application meets all formal requirements.
Substantive examination: The Office examines whether there are so-called absolute grounds for refusal. These include, for example, situations where the sign is descriptive (e.g. “SWEET” for sugar), generic or contrary to public policy, as well as whether the sign can constitute a trademark at all.

However, EUIPO does not automatically examine whether an earlier trademark owned by another proprietor or a similar trademark to the sign in your application already exists.

What does this mean? Two factual points:

it is up to the owner of the earlier trademark, which is identical or similar to the sign for which registration is sought, to file an opposition against the application for the new trademark that interferes with their trademark oppositions.
it is up to the the trademark applicant should verify (ideally before filing the application by means of a search) whether someone already owns a similar trademark for the brand, so as to (ideally) avoid opposition to the application.

You can read more about trademark searches here, in the section Search among registered trademarks: Is your brand still available?

Publication of the application

If everything is in order and the application passes the examination described above, EUIPO will publish it in the EU Trade Mark Bulletin after the fee has been paid.

Opposition proceedings

After publication, the period begins to run three-month, during which owners of older trademarks, as well as anyone who can demonstrate a legal interest, may file oppositions against the registration. If an opposition is filed, EUIPO conducts proceedings in which it decides whether the application is refused or whether the opposition is rejected and the registration process will continue.

Registration and publication

If no oppositions have been filed within the deadline, or if the oppositions filed have been rejected, EUIPO will enter the trademark in the register. It will issue the owner a certificate of registration and publish the registration. A registered trademark provides protection throughout the territory of the European Union.

Validity and renewal

A European Union trademark is valid for 10 years and can be renewed repeatedly, each time for a further ten years. All that is needed is to submit a simple application and pay the renewal fee – the brand can thus “live” under trademark protection for practically unlimited time.

What happens when someone files an opposition?

Filing an opposition is a normal part of the trademark registration process at EU level. It means that another person, most often the owner of an older trademark, believes that the new application and the sign contained in it are confusingly similar to their brand or could threaten their rights – typically because the sign is identical or or similar. Oppositions are filed directly with EUIPO, within the three-month period from publication of the trademark application in the EU Trade Marks Bulletin.

After an opposition is filed, the Office first formally checks whether it was filed on time and whether the relevant opposition fee was paid (the Office does not request payment). The Office assesses the absolute admissibility requirements – if these requirements are not met, the opposition is rejected without further examination. If the opposition is formally in order, EUIPO informs the applicant.

This is followed by a cooling-off period (the so-called cool-off period), during which both parties have the opportunity to agree on a settlement of the situation (meaning the opponent’s objections to the trademark application against the applicant’s application for registration of the sign contained in the application), for example by limiting the list of goods and services or or concluding an agreement. The cooling-off period may be extended if the parties agree that they wish to continue negotiations.

If no agreement is reached, the formal proceedings continue. Each party has the opportunity to submit its statements, evidence of use of the earlier trademark, search results or expert opinions. Everything takes place in writing through the EUIPO electronic system.

The Office then assesses all the arguments and may, in practice:

uphold the opposition: in which case the application is refused in its entirety or only for certain goods and services,
reject the opposition: and the application proceeds to the registration stage.

An appeal against the decision may be filed with the EUIPO Boards of Appeal, or the matter may subsequently be brought before the Court of Justice of the European Union. An opposition should therefore not be underestimated. It is legally binding proceedings that may affect whether your brand will be registered and protected throughout the EU. Professional preparation and representation by the SKYLEX law firm can significantly increase your chances of success, whether you are in the position of the trademark applicant, or the opponent.

How to handle oppositions and why it pays to have experts by your side

To be able to prepare for opposition proceedings, it is worth thinking about prevention even before filing the application itself. The key is to let us conduct a thoroughsearch of existing trademarks and signs, so that you know in advance whether someone is already using an identical or similar sign for the same or related goods and services and in which territory.

It is equally important to define the list of goods and services correctly; the more precise and realistic it is, the lower the risk of conflict with other brands. It also helps if the sign is sufficiently original and distinctive, because overly general or descriptive names have little chance of registration and more easily become targets of oppositions.

In industries where brands often resemble one another, such as fashion, cosmetics or technology, it is therefore sensible to consult an expert about the application design, someone who can identify risks early and suggest modifications before filing.

However, even if all preparations have been made, and EUIPO upholds an opposition and your application is refused, this is not an insurmountable obstacle. An appeal may be filed against the decision. If you are unsuccessful there as well, there is still the possibility of applying to the Court of Justice of the European Union. In many cases, however, businesses choose a more pragmatic solution: they modify the form of the brand, change the list of goods or create a new version of the logo. This approach is usually faster, financially acceptable and less demanding, and often leads to the successful registration of the new sign without a lengthy dispute.

Several typical situations can be cited from practice. For example, if you wanted to register the sign “COFFYLO” for coffee and an older mark “COFFILO” already existed for the same goods, EUIPO would most likely find that the signs were confusingly similar, and the opposition against the application and registration of the trademark would be successful. However, if the identical sign “COFFYLO” were intended for clothing, while the older mark protected coffee, the likelihood of confusion would be minimal.

Every trademark dispute is unique, and success depends on the details, from the degree of similarity between the signs and the nature of the goods to the quality of the evidence and arguments. It is therefore important to have an experienced representative, who is familiar with EUIPO practice and can manage the entire process strategically.

Registering a trademark at EU level is an investment in the stability and credibility of a brand. At the same time, it is a legal process in which even a minor error or delay can have serious consequences. If you want to be sure that everything proceeds without complications, it is worth entrusting the entire process to professionals.

If you are considering registering a trademark at EU level, contact us and we will take care of the entire process, from the initial analysis to successful registration, so that your brand can grow safely across the entire European Union. Protect what is Yours!

JUDr. Zuzana Skýpalová: skypalova@skylex.sk

Or book a consultation at https://cal.com/skylex

Authors of the article: JUDr. Zuzana Skýpalová, Bc. Mária Baničová

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