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Notice of Threatened Opposition

What Should You Do If You Receive A TM7A Notice of Threatened Opposition?

A TM7A Notice of Threatened Opposition sounds scary, but the worst thing you can do if you get one is panic.

This article tells you a bit more about TM7As, the process behind them, and what you can do if you receive one.

Once a trade mark has been accepted by the Intellectual Property Office (IPO), it is advertised in their online trade marks journal. From that date, and for the next two months, it is open to opposition.

Anyone can raise objections and these fall into one of two categories:

  • Third-party observations – these are not a formal legal action, and the Intellectual Property Office (IPO) may not act on them. You can file an observation in person, online, by post or by fax. The IPO can use this evidence in support of a later objection
  • Trade mark opposition – Opposing a published trade mark is a legal procedure. It allows you to prevent a trade mark registration if you have sufficient evidence

If during the two month period, a TM7A Notice of Threatened Opposition is filed, the opposition period is extended to three months.

It’s worth noting that you won’t always receive a TM7A. Some people will dive straight in and file an opposition.

Why is your trade mark being opposed?

There are two reasons for an opposition:

  • Absolute grounds – the trade mark is generic, descriptive, or non-distinctive (anyone can object on these grounds)
  • Relative grounds – someone owns an earlier mark or earlier rights and they believe the proposed trade mark will conflict. Only the owner of an earlier trade mark can use these grounds (the previous rights do not have to have been registered)

There is no charge to file this notice (although there is a charge for filing an opposition).

Sometimes, the opposer will contact you before filing to let you know their intentions. If they do, it gives you the opportunity to settle the dispute amicably without costly legal action.

I’ve got a TM7A Notice of Threatened Opposition, what do I do now?

As you’ve probably guessed, getting into a legal battle over your trade mark registration could end up costing you dearly. Especially if you decide to enter into opposition proceedings and lose because you’ll be liable for costs.

Alternatively, you can resolve the conflict before the opposition is launched, or withdraw your trade mark application before the opposition deadline arrives.

If it’s not possible to resolve the issue before an opposition, you can also opt for an initial nine-month “cooling off” period (with the agreement of the other party). Cooling off allows the negotiation of a settlement without having to go through the proceedings while meeting the required deadlines. The main benefit is that it can be cheaper and more flexible than going through legal proceedings. Of course, it will involve some element of compromise.

I want to fight the opposition, what do I do?

OK, so after considering all your options, you’ve decided not to enter the “cooling off” period and to fight the opposition. You now have two months to file your defence, a “counter-statement” to the opposition.

Then come the evidence rounds, where you put forward facts (not opinion) to establish your position. Once all the information has been filed, the United Kingdom Intellectual Property Office (UKIPO) asks whether you want a Hearing or whether you want a decision from the papers. Once the Hearing has taken place, or the UKIPO has reviewed the written submissions, they make an evidence-based decision on the strength of each party’s position.

Can I deal with this on my own?

It is possible to deal with this yourself. However, as with all legal processes, it’s always best to seek the help of a professional, in this case a trade mark attorney.

Whether you’ve submitted the TM7A Notice of Threatened Opposition or you are the recipient of one, it can be a complicated and costly process. Considering your business’s reputation and future is on the line, we urge you to find professional help before taking action.

 

If you’ve received a TM7A Notice of Threatened Opposition, get in touch with Rachael at Ward Trade Marks on +44(0) 1223 421779.

Ward Trade Marks Limited is a Cambridge based specialist trade mark attorney firm. 

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August 28, 2018 Rachael share this article