When a similar mark is filed in your class: what it costs to be wrong
A similar mark filed in your class starts a clock, not a dispute. Doing nothing costs more than opposing: the filing can register, coexist with your mark, and later block your own expansion. The right move depends on whether the mark has published, whether it targets your exact goods, and how fast your team responds.
The basis: relative grounds under EU trade mark law
Within the European Union trade mark system, a later mark that is identical or similar to an earlier one, filed for identical or similar goods or services, can be refused or invalidated on relative grounds. This mechanism is set out in Regulation (EU) 2017/1001 (EUTMR). The regulation does not fix a single test for similarity; it leaves the comparison of signs and goods to the office and, on appeal, to the courts.
National offices in Lithuania and Estonia apply the same relative-grounds logic under their own implementing law. The office, not a court, makes the first assessment in the great majority of cases, and it does so on the documents filed, not on an independent investigation.
What changes once the filing is published
Once a conflicting application is published, a window opens for third parties to oppose it before the European Union Intellectual Property Office. If that window closes without action, the mark proceeds to registration and becomes far harder to challenge afterwards. Invalidity proceedings against an already-registered mark carry a heavier evidentiary burden and a longer timeline than opposition does.
Waiting past the window turns a procedural objection into a substantive dispute. What would have been a comparison of two applications becomes a fight over evidence of use, reputation, and prior rights — a different and costlier exercise.
What determines the cost of being wrong
The cost of missing this window is not a fixed figure. It moves with four factors that a first message to counsel should already address.
| Factor | Effect on the response |
|---|---|
| Number of classes covered by the conflicting filing | Each additional class multiplies the evidence needed to show real overlap |
| Number of jurisdictions where the mark is filed in parallel | A single EU filing takes one opposition; parallel national filings need separate actions in each office |
| Whether the opposition window has already started | A running clock removes time for evidence-gathering and narrows the available response |
| Whether the applicant is represented and likely to contest | A contested case moves from paperwork to a reasoned decision, on a longer procedure |
We reply to a first message about a running deadline within minutes, during business hours. A fee estimate follows within one business day, once we see the filing and the classes it covers.
What to do, in order
- Confirm the publication date and the full class list of the conflicting filing.
- Check whether your own registration or use predates the filing, in the same classes.
- Instruct counsel to calendar the opposition window before any substantive analysis starts.
- Gather evidence of use — invoices, packaging, advertising — dated and sorted by class.
- Decide between opposition, a coexistence approach, or no action, based on real overlap, not on the size of the applicant.
- File the chosen response with the office directly; an informal letter to the applicant does not stop the clock.
Who decides, and on what evidence
The European Union Intellectual Property Office makes the first assessment on an EU filing, comparing the signs and the goods listed in both applications. Evidence of use, prior registrations, and market material feed into that comparison; the office does not investigate beyond what the parties submit. An appeal carries the same evidence to the Boards of Appeal, and beyond that to the courts.
Two common situations
If the conflicting mark covers only some of your classes, opposition can be limited to the overlapping classes, which shortens the evidence you need to prepare.
If your own mark is unregistered but has been used continuously, evidence of use — not registration — becomes the central exhibit. Gather it before the window closes, not after a first refusal.
If the applicant already holds a portfolio of similar filings across several classes, a single opposition rarely resolves the pattern. A broader review of the class list is the more useful step.
The same clock appears elsewhere
A similar mark filed next to yours is one version of a familiar problem: a window opens, and only one side notices in time. When a competitor files a patent application next to your product, the same asymmetry applies to a different right.
The same discipline of tracking a deadline before analysis begins applies away from trade marks too. When source code escrow is demanded: what it costs to respond depends on the same factors: scope, parties, and whether the clock has started.
Marketing choices carry a similar risk of turning silence into exposure. When marketing is treated as an offer in detail, the same rule holds: the label used before publication decides more than the label used after.
Sources and limits
This page does not tell you whether your specific mark and the conflicting filing are similar enough to succeed; that comparison depends on the actual signs and goods list, not on a general rule. It does not cover customs seizure of counterfeit goods bearing a conflicting mark, which is governed separately by Regulation (EU) No 608/2013. It does not replace a review of your own registration's scope before you decide whether to oppose.
Where the underlying question is which assets and rights can even be established before a deadline runs out, that is a factual mapping question, not a legal one. See Asset in Malta and the deadline for how that mapping is built.
Verified as of the current review cycle. Sources: Regulation (EU) 2017/1001 (EUTMR); Regulation (EU) No 608/2013.
Related publications
See also: When an opposition deadline is running and its limits.
If a similar mark has already published in your class, the window is open now, not later. Send us the filing and the class list; the calendaring and the first read happen the same day.
FAQ
What is the first step when a similar mark is filed in your class?
Confirm the publication date and the exact class list, then check that date against your own registration or first use in the same classes.
Which deadline is already running?
The opposition window before the European Union Intellectual Property Office starts on publication of the conflicting filing. Its length is fixed by the applicable EU procedure and stated on the filing record itself.
Who decides, and on what evidence?
The European Union Intellectual Property Office decides at first instance, on the signs, the goods lists, and any evidence of use or prior rights the parties submit. Appeals move the same evidence to the Boards of Appeal and, beyond that, to the courts.