If someone tries to register a trade mark that is too similar to yours, you can oppose their application. Filing an opposition is a simple and cost-effective way of protecting your brand and maintaining the monopoly your trade mark provides. In this guide, our trade mark solicitors discuss the trade mark opposition procedure in the UK and provide practical tips for business owners wishing to oppose a trade mark application.
Contents:
- On what grounds can you oppose a trade mark application?
- What is the trade mark opposition procedure in the UK?
- What information should be included in an opposition to a trade mark application?
- What happens if the applicant decides to defend the opposition?
- What are the potential outcomes of an opposition to a trade mark application?
- How long does the opposition process typically take?
- What are the potential consequences of not opposing a trade mark application?
- Can I negotiate with the applicant during the opposition process?
- What if it is too late to oppose a trade mark application?
- Can you appeal a decision made by the IPO?
- Summary
On what grounds can you oppose a trade mark application?
You can oppose a trade mark registration on two grounds, known as ‘absolute’ and ‘relative’.
Absolute grounds
Absolute grounds relate to problems with the trade mark itself and can be raised by anybody. Examples of issues that may give rise to an opposition on absolute grounds include the following:
- The mark is descriptive
A mark that merely describes the goods or services it relates to is not eligible for registration. So, if someone sought to register the mark ‘Sweet Cakes’ for a range of cakes, you may be able to oppose the application because it indicates the characteristics of the goods it is attached to.
- The mark is generic
Marks that represent an expression commonly used in the relevant trade are not eligible for registration. A trade mark can become generic over time, with well-known examples being ‘hoover’, ‘aspirin’, and ‘escalator’.
- The application was made in bad faith
You can oppose a trade mark application if you believe the applicant had a dishonest motive for making it. Examples of circumstances that may constitute bad faith include the applicant having no genuine intention to use the mark. For example, they might be registering the mark purely to prevent someone else from using it, or to sell it on.
Relative grounds
Relative grounds are based on a trade mark’s similarity to trade marks already in use. If a registration for a new trade mark that is too similar to an existing one were accepted, the owner of the original mark’s rights would be diluted. Consumers may become confused and be unable to distinguish the goods of the original trade mark owner from those of the new one. In short, the essential function of the original trade mark – to act as a badge of origin – would be impeded. Only the owner of an earlier trade mark can oppose an application on relative grounds. If they don’t, the UK Intellectual Property Office (IPO), the body which deals with UK trade mark applications, will register the mark.
What is the trade mark opposition procedure in the UK?
You have a two-month period following the date on which the trade mark application is published to oppose it. This period can be extended for a further month by filing a ‘Notice of Threatened Opposition’ using an electronic form known as a ‘TM7a’. You must file your TM7a within the initial two-month period.
You can oppose a trade mark on absolute grounds, relative grounds, or both. If you oppose an application on absolute grounds, you must explain why you believe the trade mark should not be registered. Opposition on absolute grounds is not very common, 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 using similar trade marks. If you file an opposition on relative grounds, you will need to provide details of the earlier trade mark rights on which your opposition is based and explain how the registration of the new trade mark would conflict with those rights.
After you have filed your opposition, the trade mark applicant will be invited to respond, and both sides may then produce evidence in support of their positions. The IPO will make a decision based on the evidence, 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 file an opposition, collate evidence, and prepare submissions, and will deal with any communications on your behalf.
What information should be included in an opposition to a trade mark application?
The IPO requires you to provide specific information when opposing a trade mark application, including the following:
- Details of your existing trade mark.
- Details of the goods or services you believe the new trade mark would affect.
- Details of the trade mark you are opposing.
- The grounds on which you are opposing the new trade mark.
- Why you believe there to be likelihood of confusion between your trade mark and that of the applicant.
- Why you consider the trade marks to be similar.
When you instruct our trade mark solicitors to oppose an application on your behalf, they will prepare the opposition with your input, ensuring all relevant information is included.
What happens if the applicant decides to defend the opposition?
If the applicant decides to defend the opposition, they must submit their defence within two months of receiving notice of it unless you jointly agree to a ‘cooling off period’ for negotiations.
After the applicant has filed their defence, the proceedings move to evidence rounds. You will file any evidence first, followed by the applicant. You can then reply to the applicant’s evidence if you so wish. Once all of the documentation has been received, the IPO will consider the matter either at a hearing or on paper and subsequently inform you of its decision. The unsuccessful party has a right of appeal to either the Court or the ‘Appointed Person’, who is usually a senior trade mark professional.
What are the potential outcomes of an opposition to a trade mark application?
There are three possible outcomes to a trade mark opposition, as follows:
- The opposition is upheld, and the trade mark application is refused.
- The opposition is partially upheld, and some of the applicant’s goods or services proceed to registration, whilst others are refused.
- The opposition is rejected, and the trade mark proceeds to registration.
How long does the opposition process typically take?
How long a trade mark opposition takes depends on various factors, including whether the parties file evidence and agree to a cooling-off period. A straightforward opposition may be concluded within 9-12 months. If the parties utilise the entire cooling-off period and submit evidence, the process can take up to three years.
What are the potential consequences of not opposing a trade mark application?
In general, you should object to the registration of a trade mark that is too similar to yours. If you don’t, the trade mark will proceed to registration and your earlier trade mark rights will be eroded. Trade marks are potent rights, giving their owner a monopoly over the use of the mark in connection with the goods and services for which it is registered. If a competitor starts using a mark similar to yours, confusion can ensue, and your brand may suffer irreparable harm. Your relationship with consumers can be negatively impacted, your reputation in the marketplace affected, and sales may be diverted from you to them.
Can I negotiate with the applicant during the opposition process?
Yes, the parties can agree to put the opposition procedure on hold for up to 18 months to allow time for negotiations. This is known as the ‘cooling off’ period. Sometimes, the potential impact of the new trade mark on your brand is so severe that, unless the applicant agrees to withdraw, you have no choice but to proceed with your opposition.
Trade mark opposition proceedings can be lengthy, hard-fought and expensive, and their outcome is inherently uncertain. Whilst the applicant will be ordered to pay some of your costs if your opposition succeeds, this will likely just be a contribution rather than a complete reimbursement. If your opposition fails, you will need to pay a proportion of the applicant’s legal costs. Your business goals might be best served by negotiating a commercially workable compromise with the applicant.
A popular means of settling trade mark opposition proceedings is for the parties to enter into a ‘Coexistence Agreement’. Under a Coexistence Agreement, the parties agree to restrict their respective uses of the mark and to refrain from objecting to the other party’s use, provided it is in accordance with the agreed terms. Examples of the types of restrictions businesses sometimes accept include only using their trade mark in a specific geographical area or for specified goods.
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 your best opportunity to object to it. If you only become aware of the trade mark after the owner starts to use it, you may be able to invalidate it. A registered trade mark can be invalidated on absolute or relative grounds. To invalidate a registered trade mark on relative grounds, you must show that you had earlier rights on the date of the trade mark application that could have prevented its registration.
Prevention is better than cure, and it’s always best to avoid a trade mark being registered in the first place than objecting to it later. We offer a trade mark monitoring service that alerts you to any potentially problematic applications so you can oppose them where necessary.
Can you appeal a decision made by the IPO?
You can appeal the decision if you believe the IPO was incorrect in rejecting your opposition or invalidation claim. You can lodge an appeal yourself or instruct an experienced intellectual property lawyer to act on your behalf.
Summary
Once the IPO has registered a trade mark, it can be difficult to overturn its decision and invalidate the mark. The trade mark opposition process allows brand owners to prevent problematic marks from ever reaching registration and it is an invaluable brand protection tool.
Our intellectual property lawyers are experienced in helping business owners 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.
