How to defend a trade mark opposition

Written by William Miles | June 27, 2022

Trade Marks

If you’ve landed on this blog, it’s likely that you are in receipt of a Notice of Opposition. In the UK, this is called a Form TM7. It’s worth double-checking this because if you’ve actually got a Form TM7A, then you’re only in receipt of a Notice of Threatened Opposition. A Notice of Threatened Opposition automatically extends the publication period by 1 month and, as the name suggests, acts as a warning that an opposition to your trade mark application is likely to be lodged.

If you have received a Notice of Threatened Opposition, it would be a good idea to read our previous blog post on the matter: Help, I’ve received a notice of threatened opposition, what do I do now?

But let’s get back to the Notice of Opposition. The notice should allow you to identify who your opponent is, what grounds of opposition they intend to run and which parts of your trade mark application they take issue with.

Knowing your opponent is an important first step as this may give some useful insight into their ultimate intentions and their willingness to fight their case to completion or settle early with some form of co-existence agreement.

The opposition grounds are also key, each has its own test for your opponent to meet, e.g. do they have a similar earlier trade mark (can you argue that they don’t, or can you question the validity of the earlier mark?), or do they have earlier unregistered rights (can they produce evidence of this or do you have even earlier trading activities?).

Also, in respect of the parts of your application that your opponent takes issues with, this should help you ascertain how significant the opposition is to your intentions or whether, with a bit of tweaking, you can ring-fence the problem areas and continue with your brand in respect of your core goods/services.

Subject to all of the above, it may well be that there’s no clear scope to co-exist and instead the opposition needs to be properly defended. If that’s the case then the next step is to file your notice of defence and counterstatement (Form TM8) addressing each of the opposition grounds and explaining why they should be unsuccessful. After this, each party will have an opportunity to submit witness evidence and then you will be asked if you would like the matter to be decided based on the written submissions or following an oral hearing. Most oppositions are dealt with “on paper” (i.e. without an oral hearing) and decisions are issued a few months later. If you think the decision involved an error in law, you’ll have an opportunity to appeal.

Of course, if you need help with any of the above, we are very much on hand to assist. We deal with trade mark applications and oppositions on a daily basis and we offer a free consultation meeting to all new clients. Just email to get the ball rolling.

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