Preclusion of trademark opposition before the UIBM due to peaceful coexistence of trademarks
The UIBM Appeals Commission decision on the management of trademark oppositions
In the landscape of business trademarks, a trademark coexistence agreement and the resulting preclusion of opposition before the UIBM serve as strategic tools to limit challenges to new registration applications.
Index:
- When the long-standing co-existence of trademarks prevents a nullity or infringement action from being successful
- The position of EUIPO in case of objections
- The contrary decision of the UIBM Board of Appeal
- A decision which opens the way to new jurisprudence.
Peaceful coexistence of trademarks and its impact on nullity or infringement actions
The impossibility of bringing an action for nullity/infringement against another later similar mark (for identical or related products) is expressly provided by law when this later mark, duly registered, has been used without contestation for at least five years. This decision was taken, as is known, by the EU Court of Justice (C-482/09) and then repeatedly applied to the jurisprudence, more generally also in the case where identical or similar marks (for identical or related products) – registered or unregistered – are lived peacefully and publicly for a long time.
EUIPO position on trademark oppositions and coexistence-related preclusion
In the case of administrative oppositions (UIBM trademark opposition procedure) against subsequent applications for identical or similar trademarks (for identical or related goods), the preclusion of trademark opposition due to long-term coexistence has never been considered applicable at the European level. Indeed, in managing trademark oppositions, the European Union Intellectual Property Office (EUIPO) has consistently refused to consider this argument, as well as any demonstration by the owner of the opposed application of holding other earlier registrations for the same or substantially similar trademarks.
The EUIPO has noted that the opposition procedure (UIBM trademark opposition procedure) concerns a specific registration application, not the trademark itself: the fact that the applicant also holds other earlier registrations (possibly even older than the one on which the opposition is based) for identical or confusingly similar trademarks is entirely irrelevant in the context of managing trademark oppositions.
In the context of managing trademark oppositions, the comparison is conducted solely between two entities: the earlier registration on which the opposition is based and the subsequent contested registration application. If the signs in question are identical or confusingly similar and the goods claimed are identical or related, the opposition must be upheld.
UIBM changes stance: trademark coexistence agreement prevails over opposition
In line with the EUIPO’s position on managing trademark oppositions, the UIBM initially upheld the opposition against a subsequent application for a trademark similar to an earlier registration, despite the applicant demonstrating ownership of virtually identical trademarks already validated—including one predating the application subject to the opposition.
The Appeals Commission, however, annulled that decision by emphasizing the principle of peaceful coexistence of trademarks: the peaceful coexistence (since the 1990s) of both families of trademarks demonstrates the absence of a likelihood of confusion and the resulting preclusion of trademark opposition.
Case law on trademark coexistence before the UIBM: what changes
In UIBM trademark opposition procedures, the decision of the UIBM Appeals Commission raises concerns, because the likelihood of confusion between trademarks—a key criterion for assessing actual interference—should be examined in the abstract, comparing only the signs themselves, rather than taking into account the actual market situation arising from registrations unrelated to the opposition procedure, as maintained by the EUIPO (European Union Intellectual Property Office).
This ruling will likely give rise to a solid body of case law on trademark coexistence. To limit the preclusion of trademark opposition, it is essential to carefully analyze the complete context before initiating oppositions and to act promptly in UIBM trademark opposition procedures to oppose the registration of identical or similar trademarks, thereby preventing peaceful coexistence from becoming a reason for exclusion.