For assistance with EU trademark opposition proceedings, contact French trademark attorneys specializing in intellectual property law at GOMIS & LACKER: +33 1 47 63 63 35.
See our answers to frequently asked questions about trademark oppositions at INPI and EUIPO.
EU TRADEMARK OPPOSITION ATTORNEY IN PARIS
GOMIS & LACKER represents US law firms and companies in EU trademark opposition proceedings before EUIPO (European Union Intellectual Property Office) and INPI (French Patent and Trademark Office). We serve as local counsel for EUIPO matters—handling oppositions, cancellations, and appeals in both English and French.
Under EUIPO rules, US companies must appoint EU-based counsel for opposition proceedings. Our Paris-based attorneys provide the mandatory representation while delivering the strategic guidance you expect from experienced trademark litigators.
WHY US ATTORNEYS CHOOSE GOMIS & LACKER
- Mandatory EU representation: We fulfill the EUIPO requirement for European Economic Area-based counsel
- Bilingual practice: Native English communications, oral pleadings before the EU General Court
- TTAB-familiar approach: We understand USPTO practice and explain EU differences clearly
- Proven track record: Numerous favorable decisions obtained for US and foreign companies at EUIPO
- No power of attorney required: French attorneys can file without formal POA
EUIPO VS. USPTO: KEY DIFFERENCES FOR US PRACTITIONERS
If you’re accustomed to TTAB proceedings, EU trademark opposition works differently:
| Aspect | USPTO / TTAB | EUIPO |
|---|---|---|
| Discovery | Full discovery (interrogatories, depositions) | None—paper-based only |
| Oral hearing | Available upon request | Rare (EUIPO discretion only) |
| Timeline | 2-4 years typical | 18-24 months |
| Settlement window | Anytime during proceedings | Cooling-off period (up to 24 months) |
| Cost recovery | Generally no fee-shifting | Loser pays (capped at €300 attorney fees) |
| Evidence format | Testimony transcripts, exhibits | Written submissions, witness statements |
OPPOSITION TIMELINE AND FEES
| Office | Opposition Period | Official Fee | Typical Duration |
|---|---|---|---|
| EUIPO | 3 months from publication | €320 | 18-24 months |
| INPI (France) | 2 months from BOPI publication | €400 | ~12 months |
THE EUIPO COOLING-OFF PERIOD
A distinctive feature of EUIPO proceedings is the cooling-off period—a 2-month window (extendable to 24 months by joint request) before the adversarial phase begins. During this time:
- Parties can negotiate coexistence agreements or settlements
- No legal briefs or evidence are due
- If the applicant withdraws or restricts the application, the opposition fee is refunded
- Either party can exit the cooling-off period at any time to proceed to the merits
At INPI, a similar mechanism exists: parties may jointly request up to two 3-month suspensions (6 months total) for negotiation purposes.
OUR OPPOSITION SERVICES
FOR OPPONENTS (PROTECTING EXISTING RIGHTS)
- Strategic assessment of opposition grounds and likelihood of success
- Drafting and filing notices of opposition at EUIPO and INPI
- Evidence preparation: proof of use, reputation, market confusion
- Negotiating coexistence agreements during cooling-off
- Appeals to EUIPO Boards of Appeal and EU General Court
FOR APPLICANTS (DEFENDING NEW FILINGS)
- Evaluation of opposition strength and defense strategy
- Challenging proof of use for marks registered 5+ years
- Filing observations and counter-evidence
- Negotiating settlements and specification amendments
- Conversion to national applications if opposition succeeds
TRACK RECORD
EUIPO PROCEEDINGS
- Numerous favorable decisions obtained for US and foreign companies at EUIPO Opposition Division and Board of Appeal
- Oral pleadings before the EU General Court in English and French (T-27/23, T-26/23)
INPI PROCEEDINGS
- Well-known trademark status with extended protection (INPI, May 20, 2022)
- Reversal of prior adverse decision on trademark similarity (INPI, March 10, 2025)
FRENCH COURTS
- Full dismissal of €500,000 in claims, €50,000 costs awarded (CA Paris, Feb. 21, 2024)
- €435,000 damages obtained for trademark infringement (CA Paris, Jan. 12, 2011)
FREQUENTLY ASKED QUESTIONS
Yes. Under EUIPO rules (Article 119 EUTMR), applicants and opponents without domicile or establishment in the European Economic Area must be represented by a qualified EU trademark attorney or lawyer. US attorneys cannot represent clients directly before EUIPO.
If contested through the full adversarial phase, EUIPO opposition proceedings typically take 18-24 months. However, many cases settle during the cooling-off period, which can be extended up to 24 months for negotiations.
The cooling-off period is an initial 2-month window (extendable to 24 months with joint consent) during which formal proceedings are suspended. This allows parties to negotiate settlements, coexistence agreements, or specification limitations without incurring litigation costs. If settlement is reached, the opposition fee is refunded.
No. Unlike TTAB proceedings at the USPTO, EUIPO oppositions are entirely paper-based with no depositions, interrogatories, or discovery process. Evidence is submitted in writing through witness statements and documentary exhibits. This typically results in significantly lower costs and faster resolution compared to US practice.
Yes. If the opponent’s mark has been registered for more than 5 years at the filing date of the opposed application, you can request proof of genuine use. The opponent must then demonstrate use in the EU for the goods/services relied upon, or show proper reasons for non-use. This is a powerful defense tool.
Yes. Opposition Division decisions can be appealed to the EUIPO Boards of Appeal within 2 months. Board of Appeal decisions can be further appealed to the General Court of the European Union in Luxembourg. We have experience pleading before the General Court in both English and French.
CONTACT
For a preliminary assessment of your EU trademark opposition matter, contact:
Julien LACKER
French Trademark Attorney | Certified IP Specialist
Member of INTA and APRAM
contact@gomis-lacker.fr
+33 1 47 63 63 35
Bilingual English-French practice. Licensed member of the Paris Bar. Professional representative before EUIPO.
