Opposition proceedings before the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt, DPMA) are a central instrument of trademark enforcement under German law. They allow owners of earlier rights to challenge the registration of a later German trademark in an administrative procedure that is significantly faster and more cost-efficient than civil litigation.
In Germany, trademark protection is typically obtained through registration in the trademark register. Once registered, the trademark proprietor obtains an exclusive right to prohibit third parties from using identical or confusingly similar signs for identical or similar goods and services. However, the DPMA does not examine ex officio whether a newly filed trademark conflicts with earlier trademark rights. Its examination is limited to absolute grounds for refusal, such as lack of distinctiveness or descriptiveness. Relative grounds for refusal, including conflicts with earlier trademarks, are assessed only if an opposition is filed.
As a result, opposition proceedings are of decisive practical importance. They are often the first and most effective line of defence against trademark collisions that would otherwise solidify through registration.
Who May File an Opposition before the DPMA
Opposition against a German trademark registration may be filed by proprietors of earlier German trademarks, earlier EU trade marks, or earlier international registrations designating Germany. In addition, owners of earlier business identifiers (Unternehmenskennzeichen) and persons entitled to rights arising from protected geographical indications or protected designations of origin may raise an opposition, provided that their rights have an earlier priority date.
The legal basis for opposition proceedings is section 42 of the German Trade Mark Act (MarkenG). The earlier right relied upon must have effect in Germany and must predate the contested trademark in terms of priority.
Opposition Deadline and Procedural Preconditions
The opposition must be filed within three months of publication of the trademark registration in the electronic German Trade Mark Journal. This deadline is strict and non-extendable. If it is missed, opposition is no longer possible, and the trademark acquires a legally secure status.
Within the same three-month period, the official opposition fee must be paid. If payment is received after the expiry of the deadline, the opposition is deemed not to have been filed. This procedural strictness makes trademark monitoring indispensable. In practice, many rights holders lose their opportunity to oppose simply because they become aware of a conflicting registration too late.
Form and Scope of the Opposition
Opposition may be filed in writing or electronically and must comply with the formal requirements set out in sections 29 and 30 of the German Trademark Ordinance (MarkenV). The opposition must clearly identify the earlier right relied upon and the contested trademark.
Unlike opposition proceedings before the EUIPO, German law does not require a detailed substantiation of the opposition as a condition of admissibility. It is sufficient to state that, in the opponent’s view, a likelihood of confusion exists. Nevertheless, from a practical perspective, a reasoned submission is often decisive, especially in borderline cases involving partial similarity of goods or services.
The opponent must also decide whether the opposition is directed against all or only part of the goods and services covered by the contested registration. This strategic decision may influence not only the outcome of the proceedings but also the cost decision rendered by the DPMA.
Service of the Opposition and the Cooling-Off Phase
Once an opposition has been filed, it is served on the proprietor of the contested trademark. This marks the beginning of the so-called “cooling-off” phase, which lasts two months. During this period, the proceedings are suspended to give the parties an opportunity to reach an amicable settlement.
In practice, this phase has become increasingly important. Many opposition proceedings are resolved through negotiated coexistence agreements, partial withdrawals, or agreed limitations of goods and services. Such settlements often reflect commercial realities more accurately than an all-or-nothing administrative decision and allow both parties to maintain legal certainty.
If an opposition is withdrawn during the cooling-off phase as part of an amicable settlement, opposition proceedings are typically terminated without a decision on costs, meaning that each party bears its own costs.
Adversarial Phase and Decision of the DPMA
If no settlement is reached, the proceedings enter the adversarial phase. The proprietor of the contested trademark is given the opportunity to submit arguments as to why no likelihood of confusion exists. The opponent may then respond.
The DPMA assesses likelihood of confusion based on established case law, taking into account the similarity of the signs, the similarity of the goods and services, and the distinctiveness of the earlier mark. Arguments unrelated to trademark law, such as contractual relationships or alleged prior use of the contested mark, are not considered in opposition proceedings.
If the DPMA finds that a likelihood of confusion exists, the contested trademark is revoked in whole or in part pursuant to section 43(2) sentence 1 MarkenG. If no likelihood of confusion is found, the opposition is rejected under section 43(2) sentence 2 MarkenG.
As a general rule, each party bears its own costs pursuant to section 63(1) sentence 3 MarkenG. Only in exceptional cases of inequitable conduct may costs be imposed on one party.
Remedies against the DPMA Decision
The DPMA’s decision may be challenged by filing a request for reconsideration (Erinnerung) under section 64 MarkenG and/or an appeal (Beschwerde) under section 66 MarkenG. Appeals are decided by the German Federal Patent Court (Bundespatentgericht).
When an Opposition Is Filed Against Your German Trademark
If the DPMA notifies you that an opposition has been filed against your trademark, the most important rule is: do not panic and do not act hastily. The initiation of opposition proceedings merely means that another rights holder claims that your mark conflicts with an earlier right. Whether that claim is justified is a separate question that requires careful legal assessment.
In practice, oppositions are frequently only partially well-founded, or not well-founded at all. A professional review at an early stage is therefore essential in order to develop an effective defence strategy and avoid unnecessary concessions.
Reviewing the Opposition and Possible Defences
The first step is to assess whether a likelihood of confusion actually exists under German trademark law. This requires a holistic evaluation of the similarity of the signs, the similarity of the goods and services, and the distinctive character of the earlier mark.
Importantly, even where signs appear similar, the opposition is by no means automatically lost. German opposition proceedings offer several independent defence mechanisms that are not tied exclusively to the confusion analysis.
A particularly powerful instrument is the non-use objection under § 43 MarkenG. If the opposing mark has been registered for more than five years prior to publication of your mark, the opponent must prove genuine use for the relevant goods and services. In practice, this defence often leads to partial or complete failure of the opposition.
In addition, a structured register analysis may reveal that you yourself hold earlier rights against the opponent. In such cases, the opposition can turn into a tactical stalemate or even be reversed in your favour.
Given the DPMA’s strict procedural framework and its established decision-making practice, a defence strategy should always be developed on the basis of a comprehensive register and case-law analysis.
Strategic Options Depending on the Assessment
Depending on the outcome of the review, different courses of action may be advisable.
If a likelihood of confusion is clearly present and the prospects of success are poor, it may be commercially sensible to withdraw the application or restrict the goods and services in order to avoid further escalation. This is particularly relevant if the mark has already been used on the market, as the opponent may otherwise initiate parallel civil infringement proceedings seeking injunctions and damages.
Where a likelihood of confusion cannot be ruled out, but the opposition appears only partially justified, early negotiations during the cooling-off phase are often the most efficient solution. In practice, coexistence or delimitation agreements have gained increasing importance. Such agreements may allow both parties to coexist under defined conditions, for example by limiting goods, services or channels of trade.
If, on the other hand, the assessment shows that confusion is unlikely or clearly excluded, the recommended approach is active defence. This involves submitting a reasoned response to the opponent and, if the opposition is pursued beyond the cooling-off phase, detailed written submissions to the DPMA explaining why the opposition must be rejected.
Costs of Opposition Proceedings Before the DPMA
In German opposition proceedings, a distinction must be made between official fees and representation costs.
The official opposition fee before the DPMA is currently EUR 250 for one opposing right. If the opposition is based on several earlier rights of the same owner, the basic opposition fee covers one right, and an additional fee applies for each further right relied upon.
As regards costs, § 63(1) sentence 3 MarkenG establishes the principle that each party bears its own costs, irrespective of the outcome of the proceedings. Only in exceptional cases – for example where an opposition is manifestly abusive – may the DPMA deviate from this rule and impose costs for reasons of equity.
Attorney fees are agreed separately, typically on a time basis or by reference to the value in dispute. In appeal proceedings before the Federal Patent Court, a value in dispute of around EUR 50,000 is commonly assumed, which serves as an orientation for fee calculation. On that basis, statutory attorney fees typically range between approximately EUR 1,500 and EUR 2,500 per instance.
If the opposition is terminated during the cooling-off phase, in particular by withdrawal as part of a settlement, the proceedings are normally concluded without any cost decision, meaning that each party bears its own costs.
Decision and Legal Remedies
If the opposition is not withdrawn or settled, the DPMA decides by formal decision whether a likelihood of confusion exists. Where such confusion is affirmed, the challenged mark is cancelled in whole or in part for the affected goods and services. Otherwise, the opposition is rejected.
DPMA opposition decisions can be challenged by remonstration (Erinnerung) under § 64 MarkenG and subsequently by appeal (Beschwerde) to the Federal Patent Court under § 66 MarkenG.
Practical Conclusion for German Trademarks
Opposition proceedings before the DPMA are a cost-efficient and highly effective instrument for preventing trademark conflicts at an early stage. At the same time, they require strategic foresight, precise legal analysis and a clear understanding of procedural limitations.
Early monitoring, prompt reaction and, where appropriate, structured settlement negotiations are now more important than ever. In many cases, a well-negotiated coexistence agreement offers a commercially superior outcome compared to prolonged administrative or civil litigation.
As specialised attorneys in trademark law, we advise and represent clients strategically at every stage of opposition proceedings and consistently protect their commercial interests. Our services cover the full lifecycle of trademark oppositions, including the legal assessment of potential or pending oppositions, the filing of oppositions against trademark applications or registrations, and the defence against oppositions lodged against our clients’ marks. We also analyse and pursue appropriate countermeasures, conduct settlement negotiations with opposing parties, and negotiate coexistence and delimitation agreements designed to secure long-term legal certainty. Where required, we represent our clients in reminder and appeal proceedings and act before the German Federal Patent Court.