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.

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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:

Absolute grounds

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.

Relative grounds

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.

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Free Guide: Everything A Business Owner Needs To Know About Trade Marks

The guide will explain to you in detail the essentials of trade mark protection including:-

  • Choosing a distinctive brand name – why a good choice will resonate with your customers and reduce your advertising and marketing spend.
  • The importance of avoiding the descriptive/ generic trade mark trap.
  • The importance of pre-filing searches – done the correct way – to avoid future legal action against you and the risk of having to rebrand.
  • Strategy on when to time your application.
  • Realising the value of your trade mark – why your trade mark is considered an asset on your balance sheet.
  • The importance of maintaining and enforcing your registered trade mark rights once your mark is registered.

Simply enter your details below to receive this guide instantly:

Free Guide: Everything A Business Owner Needs To Know About Trade Marks

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.

Is your trade mark unique?

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.

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Make An Enquiry

To make a no obligation enquiry, please either call us on 01284 619000 or Make an online enquiry and we will be delighted to help you.

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Make an Enquiry

To make a no obligation enquiry, please either call us on 01284 619000 or make an online enquiry and we will be delighted to help you.

Make an Enquiry