Opposing a confusingly similar trade mark application is a simple and cost effective way of protecting your brand. In this guide we give you an overview of the trade mark opposition procedure in the UK and provide practical tips for business owners that would like to oppose a trade mark application.
Contents:
On what grounds can you oppose a trade mark application?
You can oppose a trade mark registration on two grounds: absolute grounds and relative grounds.
Absolute grounds for refusing registration of a trade mark relate to problems with the trade mark itself. The most common reason for refusing a trade mark on absolute grounds is that it is descriptive of the goods or services for which it will be used. However, there are other less frequently used grounds for refusal. A trade mark may be refused because it is contrary to morality or public policy, for example. If any of the absolute grounds for refusal apply, the UK Intellectual Property Office (IPO) will decide not to register the trade mark.
Relative grounds for refusal are based on a trade mark's similarity to other trade marks already in use. If two identical trade marks are allowed to coexist, consumers would be confused and would not be able to identify the origin of a business’s goods or services. Relative grounds for refusal also apply to confusingly similar trade mark applications. If a trade mark is confusingly similar to one that is already in use, then the IPO can refuse to register the new trade mark.
The IPO will not investigate relative grounds on its own initiative. All trade mark applications are published by the IPO. It is up to the owner of the earlier trade mark to raise an objection with the IPO within the opposition period. In the absence of any objection the new trade mark will be registered.
What is the trade mark opposition procedure in the UK?
If you want to oppose a trade mark registration you must advise the IPO within two months of the application being published. You can oppose a trade mark on absolute grounds or relative grounds or both. If you oppose a registration on absolute grounds you will have to explain why you believe the trade mark application should not be registered. Opposition on absolute grounds is not very common, however, because the IPO weeds out the most obviously unregistrable trade marks of its own accord. Most oppositions are based on relative grounds and are typically filed by businesses that are already using similar trade marks. If you file an opposition on relative grounds you will be expected to provide details of the earlier trade mark rights on which your opposition is based and to explain how the registration of the trade mark in the application would conflict with those earlier rights.
After you have made your submission the trademark applicant will be invited to make a submission in response. Sometimes, depending on the circumstances, more than one submission from each party may be necessary. Ultimately the IPO will make a decision based on the evidence submitted by the parties and the trade mark application will be refused, or registered for some or all of the goods and services.
If you would like to oppose a trade mark application but are unsure of the process we can help. Our team of trade mark lawyers can help you prepare evidence, file an opposition and deal with any communication on your behalf.
What if it is too late to oppose a trade mark application?
The two-month opposition period after a trade mark application is published is the best opportunity to oppose its registration. However, you might miss this opportunity and only become aware of the trade mark registration after the owner starts to use it in the market place. After a trade mark is registered it can be invalidated on absolute grounds or relative grounds. If you had earlier rights on the date of the trade mark application that could have prevented registration of the trade mark you can apply to have the trade mark invalidated. It is important to remember, however, that the opposition period is the best time to oppose trade mark registration. It is rarely a good idea to take a wait and see approach. A trade mark monitoring service is an effective way of identifying trade mark applications made by competitors within the opposition deadline.
Can you appeal a decision made by the IPO?
If you believe the IPO was incorrect in deciding against your opposition or invalidation claim you can appeal the decision. You can appeal the decision yourself or you can contact an experienced intellectual property lawyer who can act on your behalf.
Summary
There is a legal procedure you must follow if you would like to oppose a trade mark application. You can either oppose on absolute or relative grounds. The two month opposition period is the ideal time to oppose a registration. Once a trade mark is registered it becomes more difficult to overturn a registration decision made by the IPO.
Our intellectual property lawyers are experienced in helping frustrated business navigate the trade mark opposition process in the UK. If you would like to understand the process in more detail or are interested in how much it would cost to oppose a trade mark application contact us to arrange an initial no-obligation consultation.
