How to defend a trade mark opposition in the UK

If you’ve landed on this blog, you are likely 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 instead, then you’re only in receipt of a Notice of Threatened Opposition. This notice automatically extends the publication period by one 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 application they take issue with. Here are a few key steps that should help you better understand how to defend a trade mark opposition.

Know your opponent

This an important starting point as it may give some useful insights into the ultimate intentions of your opponent, as well as their willingness to fight their trade mark case to completion or settle early with some form of co-existence agreement. Where possible, it’s always preferable to resolve a trade mark dispute without the need for formal opposition proceedings.

What grounds do they have?

The relative grounds of opposition your opponent has are key when determining the strength of their case for a UK trade mark application. Each has its own test for your opponent to meet, for example:

• Do they have a similar existing registered trade mark?
• Can you argue that they don’t, or can you question the validity of the earlier trade mark application?
• Do they have earlier unregistered trade mark rights?
• Can they produce evidence of this or do you have even earlier trading activities?

Also, in respect of the parts of your trade mark application that your opponent takes issues with, this should help you ascertain how significant the opposition is to your intentions or whether they can present legal arguments that would stand up in court. With a bit of tweaking, you may be able to ring fence the problem areas and continue with your brand with no issues regarding trade mark law.

File your notice of trade mark defence

Subject to all of the above, it may well be that there’s no clear scope to co-exist and instead, the trade mark 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.

Submit witness evidence

After this, each party will have an opportunity to file 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 trade mark 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 trade mark law, you’ll have an opportunity to appeal.

Looking for expert support with a trade mark application or opposition?

Of course, if you need help with defending a trade mark opposition in the UK, we are very much available to assist. Our trade mark specialists deal with applications and oppositions daily, and we offer a free consultation meeting to all new clients. Just email to get the ball rolling.