Harper James advises UK businesses on trade mark oppositions under the laws of England and Wales, including the practical steps required before the UK Intellectual Property Office (UKIPO). A trade mark opposition is a formal challenge to an application during the period after it has been published and before registration.
A UK trade mark application is normally open to opposition for two months after publication in the Trade Marks Journal. The prospective opponent can request a one-month extension by filing a Form TM7A within the initial two-month period. An opposition is started using Form TM7, accompanied by the applicable fee and details of the grounds relied on.
The grounds are usually relative grounds, such as an earlier identical or similar trade mark for identical or similar goods or services, or absolute grounds, such as lack of distinctiveness or descriptiveness. The opponent must identify the relevant earlier rights, trade mark classes and goods or services. A business should review the application, its own registration portfolio, marketplace use and available evidence before filing.
The trade mark applicant receives notification of the opposition and normally has two months to file a counterstatement using Form TM8. The counterstatement responds to each ground and explains whether the opposition is admitted, denied or requires proof. Missing the deadline can result in the application being treated as abandoned.
The parties can request a cooling-off period to discuss settlement. The initial period is nine months, and the parties can apply for a further nine months. Settlement terms can include withdrawing some goods or services, limiting the specification, agreeing coexistence terms or abandoning the application. Any agreement should address future filings, branding changes, enforcement and the parties' respective costs.
If the opposition continues, the UKIPO sets directions for evidence and written submissions. Evidence can include dated sales records, advertising material, packaging, website archives, customer or industry evidence, and information showing use of an earlier mark. The relevant evidence depends on the pleaded grounds. For example, a proof-of-use request requires the opponent to demonstrate genuine use of the earlier mark for the relevant goods or services during the prescribed period.
The parties can request a hearing or rely on written submissions. The UKIPO generally makes a costs award, although this is usually based on a scale rather than a full recovery of legal costs. A business should therefore compare the commercial value of the mark with the cost of evidence, hearings and possible appeal before deciding how far to proceed.
The result can be a refusal of the application, a restriction of its specification, dismissal of the opposition or an agreed settlement. A party dissatisfied with the UKIPO decision can appeal to the appointed person or the High Court, subject to the applicable rules and deadlines.
The most effective early step is to create a timetable covering the opposition deadline, Form TM8 deadline, evidence stages, cooling-off period and hearing dates. The business should also preserve records of trade mark use and assess whether negotiation, partial opposition or full proceedings best matches its commercial objectives.