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How To File An Opposition Against A Trade Mark

Before we tackle the big question of how to file an opposition against a trade mark, let’s look at why you would want to.

In an earlier blog, we looked at what you should do if you receive a TM7A Notice of Threatened Opposition. But what if the boot was on the other foot? What if you needed to file your own TM7A? What circumstances would lead you to that decision?

All trade mark applications are advertised on the UKIPO’s online journal. However, you may also receive a letter from the UKIPO telling you your mark has been mentioned in the examination report of an application that’s being processed.

As soon as you get this, the clock is ticking because you only have an initial two-month window (if the mark is being registered by the EUIPO, there is an initial three-month period) in which to take action.

You have two options.

Two ways to file an opposition against a trade mark application

The first way is to raise a third party observation. This is a non-legal action advising the UKIPO they accepted the application in error. In it, you must tell them all the relevant facts that they may not be aware of.

Because this is not a legal action, the UKIPO is not bound to act on it.

The second way is to file an opposition to a trade mark. This is a legal action that allows you to attempt to stop a published mark going on to become registered.

Opposing a trade mark

If you go down the legal route, you can either fight the whole application or only some of the goods/services it covers.

Once again, you have two options:

  • Absolute grounds: this covers defects within the mark such as it is too descriptive, generic, or non-distinctive
  • Relative grounds: this means an earlier trade mark exists that you own which the applicant’s trade mark would conflict with

Only the owner of the previous trade mark can oppose an application on relative grounds, whereas anyone can oppose on absolute grounds.

How to file your objection

If you want to file an opposition to a trade mark, it’s best (in the first instance) to contact the applicant in writing. It’s always better to settle the matter amicably rather than going through the formal proceedings. The IPO offers a mediation service that may be of use here.

However, if you prefer, you can file your objection formally.

We mentioned earlier that once a trade mark application has been made you only have a two-month window in which to take action (three months if the EUIPO).

This period can only be extended by filing form TM7A, ‘Notice of threatened opposition,’ within the initial two-month period. Although this doesn’t commit you to opposing the application, you should only submit one if you are serious.

Which is why, although you are able to submit your opposition on your own, it’s not advised. For example, if you misfile or miss the deadlines, you will lose your right to oppose the mark.

Using a trade mark attorney, you can be sure that your opposition will be made in time and in the correct manner and avoid unnecessary costs.

The legal costs of opposition

It’s important you are aware of the cost implications when you file an opposition against a trade mark.

First, cost awards won’t cover all your proceeding costs. They are purely a contribution towards the costs of the winning party. If:

  • You withdraw your application you must pay costs to the opponent
  • Your proceedings were launched without warning, giving the opponent no opportunity to negotiate or reach a compromise, and they then withdraw their application, you will not receive any award of costs
  • The opponent defends their application and loses, they must pay costs to you

These are a few more good reasons why it’s important to get a professional on your side. Using specialist software, many trade mark attorneys are able to accurately track every aspect of a trade mark application ensuring you don’t miss your window of opportunity.

They will also be able to advise you of the likely outcome of your opposition, potentially saving you from paying out unnecessary costs.

Do you want to file an opposition to a trade mark application? Before you do anything else, contact Rachael at Ward Trade Marks on +44(0) 1284 774841.

Ward Trade Marks Limited is a Bury St Edmunds-based specialist trade mark attorney firm.

 

 

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September 13, 2018 Rachael