Trade Mark Oppositions
Trade Mark Oppositions
Trade mark oppositions can be filed when someone attempts to register a mark that’s identical or similar to yours. You may receive a letter from the UK Intellectual Property Office (UKIPO) telling you this. Or, you can receive an opposition if you attempt to register a trade mark that’s too close to an existing mark.
If you hear from the UKIPO advising you of a possibly conflicting application, the clock is ticking. You only have an initial two-month window (if the EUIPO is registering the mark, there is an initial three-month period). Our team will make sure you don’t miss your opportunity to oppose the application.
If, on the other hand, you are the subject of a Notice of Threatened Opposition (Form TM7A) we will work with you to get the best outcome, which could be withdrawing your application, coming to a mutual agreement with the other party, or fighting the opposition by initially issuing a counterstatement defence.
It can be a costly and complicated process, so we always advise you get professional help rather than trying to fight it on your own.
How an opposition is filed
An opposition to a trade mark is filed at the UKIPO by submitting a Form TM7 and paying the relevant fees. This begins a legal action and could therefore mean the proposed trade mark application can’t be registered.
Opposing a trade mark
Using the legal route, we can either oppose the whole application or only some of the goods/services it covers, on your behalf. This can be on either or both of the following:
This basis looks at the trade mark and flags up any issues, such as if it is too descriptive, generic, or non-distinctive, for the goods and services listed in the application.
This basis can be claimed where you own an earlier trade mark (either an application or registration), or other earlier legal rights such as designs or copyright, that the applicant’s trade mark will conflict with
Only the owner of the earlier trade mark or earlier legal rights can oppose an application on relative grounds, whereas anyone can oppose on absolute grounds.
How to file your objection
If you are considering opposing an application, we will usually (in the first instance) contact the applicant in writing to see if the conflict can be settled, thereby avoiding formal proceedings.
Sometimes that isn’t possible and we have to look at filing a formal objection, but you only have two months in which to act (three if it concerns an EU application).
In the UK, we can extend this period by submitting a Form TM7A, ‘Notice of Threatened Opposition,’ on your behalf.
Working with us, you can be sure that your opposition will be made in time, in the correct manner and avoiding unnecessary costs.
The legal costs of opposition
In trade mark opposition proceedings, the successful party will generally be able to ask for an award of costs once a decision has been made by the UKIPO. The costs awarded follow a standard scale. It’s essential you are aware of the cost implications of an opposition.
First, cost awards won’t cover all your proceeding costs. They are only designed to be a contribution towards the costs of the winning party.
- If you withdraw your application, you must pay costs to the opponent
- If your proceedings were launched without warning, giving the opponent no opportunity to negotiate or reach a compromise, you would not receive any award of costs
- If the opponent defends their application and loses, they must pay costs to you
These are a few more good reasons why it’s essential to get our team on your side. Using specialist software, we can accurately track every aspect of a trade mark application, ensuring you don’t miss your window of opportunity. We also use this software to track the progress of the trade mark opposition, making sure you meet all the deadlines with no loss of rights along the way.
What happens if you get a TM7A Notice of Threatened Opposition?
The first thing we’ll do is find out on what grounds your trade mark is being opposed:
- Absolute grounds – your trade mark is seen to be generic, descriptive, or non-distinctive
- Relative grounds – someone owns an earlier mark or earlier rights that they think will compromised by your application
We assess the strength of the potential opposition against you. Following our assessment, you can then decide if we try and resolve the conflict before the opposition is launched or whether it makes more sense to withdraw your application.
If neither of these actions are possible, once an opposition is filed, you can opt for an initial nine-month “cooling off” period (though only with the agreement of the other party). This gives us time to conduct negotiations for a settlement. This can be a cheaper and more flexible option than the legal route. The cooling off period can be extended if it’s not been possible to settle the opposition in time.
On the other hand, if you decide to fight the opposition, you have two months in which to file your defence. The opponent will have two months to file their evidence, and you are given the same time to file your evidence. The opponent may file more evidence in reply. Then you have the choice of filing further submissions (arguments to say why your application should be accepted) and asking for decision from the papers or requesting a Hearing. A Hearing is attended by one or both parties to the opposition, and the case is discussed before a Hearing Officer, usually by video link to the UKIPO. The Hearing Officer will then make the final evidence-based decision. This decision can be appealed to a senior lawyer who is known as the Appointed Person, or to the High Court.
It’s a complex area to navigate, which is why our team is on hand ready to make sure your get the best possible outcome for your situation.
Trade Mark Reviews
One of the greatest assets of any brand is it’s IP. Working with Rachael is a joy – her professional insight, experience and clear (no jargon) communication enables you to make informed decisions about how and where you protect your brand. Whatever stage of business/brand development you are currently at, I’d recommend speaking with Rachael, to find out what you can protect and the best ways to achieve a robust solution, that’s fit for purpose.
Extremely happy with the professional service provided by Ward Trade Marks in obtaining our trade mark. Their advice and support made the process stress free and I would not hesitate to recommend them to others.
Rachael is extremely personable and professional. She has handled all of our trade marking adventures over the last few years with success and efficiency. Highly recommended.
Rachael worked with my daughter and me to trade mark our company name, Arya Candles. She is a true professional and a delight to work with. Highly knowledgeable and nothing was ever too much trouble.
Rachael Ward provided us with excellent service over a period of over 3 years (2014-2017). Rachael is a very practical and pragmatic trade mark attorney: she gets quickly to the heart of a problem and is extremely efficient in her work. She has a good depth of knowledge about trade mark law, but never allows this to get in the way of clear-sighted, practical advice. I would strongly recommend any business to use Rachael Ward and Ward Trade Mark Services on trade mark issues.
As a marketing and design company it has been in the back of my mind since I launched TukTuk Creative Marketing to trademark the brand. There have been a few local companies who have recently had to change their name and branding because another company has objected. I love our company name, and it brings to life what I wanted to do when I started the company – taking brands on an inspiring journey, and what better way than on a TukTuk. To lose the name now or in the future would be crushing. Rachel has been amazing from the start, and I whole heartily trust her to set up the Trademark and follow up with any issues that occur along the way.
Rachael is very efficient and productive trademark law expert which helped us to register copyrights for few our brands. She did a good research and gave us useful advices. Their fees are very reasonable. We were happy working with her.
I approached Rachael after working unsuccessfully with two other trade mark companies. Rachael was a joy to work with. She explained everything very clearly and was very open and upfront with her pricing. I was kept fully updated of the progress of my application. I am pleased to say I have now got my EU trademark, thanks to Rachael.
Our initial consultation with Rachael at Ward Trade Marks reinforced our focus regarding our branding and Company marketing for the future. Once BoMoJo was officially registered and published it enabled us to apply and acquire @BoMoJo as a Twitter username from an account that had been dormant for over 6 years. Twitter processed our request, swiftly and promptly and all was completed within a week, transferring our followers from @BoMoJoProd to @BoMoJo. Quite simply a first-class service is what you can expect from Rachael, who is extremely efficient, using her experience, knowledge and expertise to deliver your Trade Mark requirements. Rachael is thorough and precise. Cristina and Barry have absolutely no hesitation in highly recommending Ward Trade Marks.
Having been recommended to us by a trusted friend, we engaged Rachael to acquire a trade mark for our new venture, and thank goodness we did. What we thought would be a simple application, met with objections from a company in the US, however Rachael’s sound, professional advice, steered us through the negotiations to a successful conclusion, TM approved! I would not hesitate to recommend Rachael to anyone who is not an expert in such matters, (and the bill was very reasonable too!)
Rachael was a business partner to Mars trade marks team advising on all product segments. Rachael applies a compelling mix of trade mark and commercial knowledge and experience to her advice. She is a clear communicator and client-focus is always number 1. A true collaborator and pleasure to work with.
As a branding agency, we believe that it’s critical for businesses to make sensible decisions about protecting their entities. We recommend using Ward Trade marks to our clients, as they fully comprehend the minutiae of the whole process and get it done in a fuss free, cost effective way, but most importantly, they make sure your brand assets are fully protected, which can alleviate a lot of potential heartache later on.
As a charity The Woodbridge Tide Mill Museum was hesitant to enter the world of trade mark protection for fear of endless paperwork and high costs. We were recommended to speak to Ward Trade Marks and it proved to be good advice. Bill and Rachael provided a fast, well-explained and cost-effective service so that the whole matter was resolved within a couple of months. No stress, no jargon just common sense, knowledge and experience. Highly recommended.
Ward Trade Marks were fantastic to deal with, they explained everything in an understandable way which for the layman made it easy to comprehend and have efficiently seen our application through from initial discussion to fruition. As a charity our name means everything and we wanted to protect it.
Friendly, knowledgeable people, who I feel we can trust with all of our Trademark concerns / issues. The company is available when I need them (answer my queries out of regular hours – not something I can expect but something I really value and appreciate) and I feel ‘goes the extra mile’.
-Loved your service. I thought the service was very friendly and professional and couldn’t ask for anything more really.
Great attention to detail, good updates right through the process – we were new to the trademarking process, you supported us through the journey. So from our perspective you fully met our requirement.
The team @ Ward Trade Marks and especially Rachael have been instrumental in supporting and developing the IP @ Crude Coffee. As a new startup business I cannot recommend highly enough the help, guidance and IP strategy that Rachael and the team have created for us. I would not hesitate to recommend them to any other start-ups or established businesses looking to create, develop and protect your IP!
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