A third party has filed a trademark application similar to yours.

Who can file an opposition and on what basis

The applied-for sign will not be registered in the register based on oppositions filed by persons listed in Section 7 of the Trademark Act under Czech legislation. These are primarily owners of earlier identical or similar trademarks if there is a likelihood of confusion, but also users of unregistered signs used in the course of trade, persons with rights to a copyrighted work, right to protection of personal rights, or with an earlier right from other industrial property. Oppositions can only be filed on the grounds specified in this provision.

Therefore, a registered trademark is not always necessary to file an opposition. A user of an unregistered sign used in the course of trade may file an opposition if they acquired rights to it before the filing date of the opposed application and there is a likelihood of confusion (Section 7(1)(e)). Anyone who does not have an earlier right cannot file an opposition. They can submit observations based on other, absolute grounds, which the office will take into account, but their author does not become a party to the proceedings.

This offers a practical lesson on why a brand should be registered. A company that only uses its brand and does not register it faces greater difficulties defending itself in proceedings regarding a competitor's similar application, as it must prove that it acquired rights to the sign before the competitor filed the application. The owner of a registered trademark can substantiate their right much more easily. The basic registration procedure, i.e., how to choose a sign, classes, and file an application, is summarized in the article on how to register a trademark.

An opposition may be based on one or more earlier rights, provided they all belong to the same opponent, and may relate to some or all of the goods or services for which the application is filed (Section 25 of the Trademark Act under Czech legislation). A company with several trademarks can therefore combine them into one set, but cannot combine the rights of different owners, such as a parent company and its subsidiary.

Three months from publication: a non-extendable deadline

An opposition can be filed within a period of three months from the publication of the application, and this deadline cannot be extended, nor can its missed deadline be excused (Section 25(1)). The office will reject the opposition simply because it was not filed within the statutory period, was not filed by an authorized person, or failed to state the grounds or provide supporting evidence (Section 26 of the Trademark Act under Czech legislation).

Crucially, the deadline runs from the publication of the application, not from the moment the company learns about it. Those who do not monitor third-party applications may find that the three months have already passed. In that case, an opposition cannot be filed, and defense must rely on other means, typically after registration by filing a request for revocation or declaration of invalidity, which is longer and more expensive. Therefore, companies that value their brand continuously monitor identical and similar signs applied for identical or related goods and services.

Furthermore, the deadline is twofold: within three months, not only must the opposition be filed, but evidence must also be submitted. The office does not take into account any additions to the opposition or evidence submitted after the deadline (Section 25(2)). A company that files a brief opposition with the intention of supplementing the evidence later risks having its evidence completely ignored by the office.

Practical consequence: the deadline is calculated from publication, and preparation days are counted backward. The final week is designated for review and filing, the preceding two weeks for evidence and justification, and the rest for deciding whether to file an opposition. If a company only learns about the application in the second or third month, it has only a few weeks to prepare, which is why it pays to have a procedure ready in advance.

What an opposition must contain and how to substantiate it

An opposition must be reasoned and supported by evidence allowing each of the grounds to be examined (Section 25(2)). It must contain an indication of the goods or services to which it relates, or an indication that it relates to all goods and services in the application, details of the earlier rights on which it is based, and an indication of the goods or services on which those rights are based (Section 25(5)). Missing reasoning or evidence leads to the rejection of the opposition (Section 26(1)).

A good opposition is brief, specific, and well-substantiated. It demonstrates how the signs are identical or similar, which goods or services overlap, and why there is a likelihood of confusion in the eyes of consumers. The scope of evidence depends on the ground of opposition: for an earlier registered trademark, the basis is proving the earlier right and justifying the conflict; documents showing use, reputation, or goodwill, such as invoices, catalogs, advertisements, or turnover, are crucial for an unregistered sign or a trademark with a reputation.

It is important to select the earlier rights correctly. A company with several trademarks should choose those that are closest to the applied-for sign and the strongest, rather than trying to use them all at once. An overly broad selection weakens the opposition and, for trademarks registered for more than five years, increases the risk that the opponent will request proof of use for each of them.

The strategy is also influenced by which goods or services the opposition is filed against. It may relate to only part of the application (Section 25(4)), allowing a company to challenge only the part that actually concerns it and leave the rest. This is often an acceptable compromise: the applicant gets the registration for the non-conflicting area, and the owner of the earlier trademark maintains their field.

Observations and oppositions: what is the difference

Anyone may submit observations to the office based on absolute grounds under Section 4 until the end of the opposition period, and the office will take them into account when deciding on registration, although the person who submitted the observations does not become a party to the proceedings (Section 24 of the Trademark Act under Czech legislation). Observations cannot be submitted on grounds under Section 7, i.e., due to conflict with an earlier right (Section 24(3)).

The difference lies in the grounds on which both instruments are based and in their effect. An opposition is filed by a person with an earlier right, who becomes a party to the proceedings with the right to respond and receive a decision. Observations can be submitted by anyone, but only on grounds relating to the sign itself, such as its descriptive nature. The author of the observations does not comment on their outcome and is merely notified of the result of the assessment.

Thus, these are not two alternative options depending on whether a company has a trademark. The owner of an earlier right asserts the conflict through an opposition, and if the sign is also descriptive or deceptive, they can submit observations concurrently. In practice, observations are submitted less frequently because the office examines absolute grounds on its own initiative. They make sense particularly where the applied-for sign could deceive consumers or prevent others from normal use.

What happens after filing: proceedings and proof of use

If the office does not reject the opposition under Section 26(1), it will notify the applicant of its content and set a deadline for them to respond; if they fail to respond, the office will decide based on the file content (Section 26(2)). If it finds that the applied-for sign infringes upon the earlier rights of the opponent, it will reject the application, either in its entirety or only for the affected goods or services (Section 26(4)).

The applicant has a powerful tool: they can request proof of use of the earlier trademark. If, on the filing date or priority date of the opposed application, the earlier trademark had been registered for at least five years, the opponent must, at the applicant's request, prove that they genuinely used it during the five years preceding that date for the goods or services on which the opposition is based, or that there were proper reasons for non-use (Section 26a of the Trademark Act under Czech legislation). The request must be submitted no later than two months from the delivery of the opposition for response, and this deadline cannot be extended or excused.

The opponent then has four months from the delivery of the office's invitation to submit evidence, and this deadline cannot be extended either (Section 26a(7)). This is a separate step, distinct from the evidence attached to the opposition. If they fail to submit evidence and it is the only earlier right, the office will reject the opposition (Section 26a(9)). If the earlier trademark was used only for some goods or services, it is deemed registered only for those goods or services for the purposes of the opposition proceedings (Section 26a(8)).

This leads to advice for the owner of an earlier trademark: before filing an opposition, verify whether you can prove its use. Invoices, price lists, catalogs, websites, and advertisements for the five years preceding the filing of the opposed application must be traceable and correspond to the goods or services on which the opposition is based. How to collect and archive proof of use is discussed in the article on how to protect a brand and dietary supplement packaging and prove use.

Amicable settlement: agreement instead of a decision

During the opposition proceedings, the office will, based on a joint request from the applicant and the opponent, set a period of at least two months for an amicable settlement (Section 26b of the Trademark Act under Czech legislation). The law therefore anticipates that the parties may reach an agreement, and upon joint request, reserves at least two months for them to attempt to settle.

Many disputes over similar brands end in an agreement, not a decision. The owner of the earlier trademark agrees to the registration under certain conditions, such as limiting the goods or services, differentiating the appearance, or prohibiting expansion, and the applicant gets the registration without the risk of rejection. Although the office can reject the application only for part of the goods or services, it will not modify the appearance of the sign, the method of use, or future expansion, whereas an agreement can. The content of such an agreement and its pitfalls are discussed in the article on how to agree instead of a lawsuit over a similar brand: Two companies, a similar brand: agreement instead of a dispute.

If the opponent grants written consent to the registration after filing the opposition, the opposition is deemed withdrawn and the proceedings are terminated (Section 7(3)). Therefore, consent is only given after all conditions have been negotiated, not beforehand, because by granting it, the owner of the earlier trademark loses the opportunity to continue the opposition proceedings and a significant part of their bargaining power. The sequence of steps is just as important as the content of the agreement.

For the proceedings before the office, it is also important that the agreement does not have to resolve everything. The parties can negotiate only a part, such as limiting the scope of goods or services, and let the office decide on the rest. There are more options than it seems, and a reasonable lawyer will discuss them before negotiations begin so that the client knows what can be achieved and what cannot.

Five steps after discovering a third-party application

The first step is to find out when the application was published and calculate the deadline. This task takes minutes and determines everything else: the final day is calculated from the publication date, and planning is done backward from there. If the deadline has already passed, an opposition cannot be filed, and a different procedure must be chosen.

The second step is to assess whether the company has the standing and evidence. Does it have an earlier right, typically a registered trademark or an unregistered sign used in the course of trade before the application was filed, that is similar to the applied-for sign for the same or similar goods or services? Can it prove use if the applicant requests it? If so, an opposition makes sense. If not, it is better to consider negotiating with the applicant or defending through other means, such as unfair competition.

The third step is to decide whether to file an opposition or negotiate. Sometimes it is more advantageous to write to the applicant and offer an agreement before filing, as a letter costs less than proceedings. However, negotiations must not push the filing past the deadline. The fourth step is preparing and filing the opposition with evidence within the statutory deadline, and the fifth step is monitoring the proceedings and potentially utilizing an amicable settlement.

This is also related to European Union trademark applications, as a similar sign may also appear at the European office. The procedure there is different, but the logic is similar, and a comparison is offered in the article on opposition proceedings before EUIPO. A company holding a European Union trademark should therefore also monitor applications published by this office.

Four mistakes that waste an opposition

The first mistake is waiting. A company learns about a third-party application, but no one calculates the deadline, and after three months, an opposition can no longer be filed. The price is the registration of a similar brand and a subsequent, more expensive dispute. It helps to have one person monitoring deadlines and a procedure that is triggered the day the application is discovered.

The second mistake is filing an opposition without evidence. A company submits a brief text intending to supplement the evidence later, but the office does not take later additions into account, and the opposition is rejected for lack of evidence. Evidence must be prepared within the deadline. Therefore, the preparation of documents begins before the decision to file is made, not after.

The third mistake is relying on an earlier trademark that the company itself does not use. The applicant requests proof of use, and the opponent fails to provide it, causing the opposition to fail. The fourth mistake is granting consent prematurely: the company agrees to the registration before the conditions are negotiated, losing its bargaining position. Therefore, the Prague-based Czech legal team at ARROWS begins by calculating the deadline and verifying proof of use, and only then suggests whether to file an opposition or negotiate.

Risks of a third-party application for a similar sign

Summary

Companies have three months from publication to file an opposition against a third-party application; the deadline cannot be extended, and evidence must be submitted within this timeframe. The article showed that an opposition is filed by a person with an earlier right, even without a registered trademark, that the applicant can request proof of use of the earlier trademark, and that the proceedings can also end in an agreement.

For company management, this implies a clear procedure: monitor published applications, calculate the deadline on the day of discovery, verify proof of use, and only then decide whether to file an opposition or negotiate. Delaying these steps leads to the deadline passing and the similar brand being registered.

The Prague-based Czech legal team at ARROWS monitors third-party applications, prepares and files oppositions with evidence, represents companies in proceedings before the office, and negotiates coexistence agreements. Write to us at consultation@arws.cz or explore our service for contracts and negotiations.