My trade mark application has been opposed, help!

Written by Samuel O’Toole | October 21, 2021

Trade Marks

With the caveat that I am biased, trade marks are wonderful things. They provide a clear method for brand owners to protect and police the use of a brand. They are a valuable commercial asset. And they help us, as consumers, to distinguish products from one business to another.

The trademark registration procedure in the UK is also relatively straightforward. An application is made, which will then be examined by a trade marks examiner under the “absolute grounds” (e.g. can the mark actually function as a trade mark?) and will then be published for third parties to take objection under the “relative grounds” (e.g. does your application tread on the toes of a third party trade mark right?).

It’s during this publication period that most issues arise. This is because rights holders will actively oppose the registration of applications which are similar or identical to their own. Generally, rights holders will write to the applicant to explain their concerns and request that some action is taken, or they may simply opt to file an official trademark opposition. But what should you do if your trademark application is opposed?

What to do if your trademark application is opposed

Well, just because a trade mark application has been opposed, it doesn’t mean the game is over. The UK Intellectual Property Office (UKIPO) operates an opposition procedure in which each party to the trade mark opposition (the applicant and opponent) are permitted to file a statement of their case, evidence and legal submissions before a decision is made either “on the papers” or at an oral hearing.

It is very important to keep in mind the deadlines set by the UKIPO, as once a trade mark application is opposed, the UKIPO will provide a deadline by which the trade mark applicant needs to file a TM8 and Counterstatement (a defence to the opposition) or file a TM9c (a request to enter into a cooling off period to facilitate settlement). This deadline to file the TM8 or TM9c is not extendable, so to preserve the trade mark application, it’s essential to make a timely filing.

We would recommend filing the TM8 if there are good prospects of defending the opposition, which your legal representatives will be able to advise you on. Although the filing of the TM9c, which can only be done if both parties agree, is a very valuable tool as it allows a period of 9 months in which a settlement can be negotiated. Again, your legal representative will be able to help advise you on what is best for your opposition.

A key recommendation in trade mark oppositions is always to consider settlement. Only a small number of oppositions make it to a UKIPO decision. Oppositions are generally slow processes, and so often, with a pragmatic approach, it can be possible to work out terms of settlement or co-existence. Generally, co-existence agreements entail the trade mark applicant giving up some of their trade mark and providing a contractual promise over the use of the mark in return for the opponent withdrawing the opposition. For example, you may be up against an opponent who doesn’t want you to provide legal services under the brand and if that’s removed from your application, they will withdraw the opposition. It’s always worth putting yourself in the position of the brand owner and looking to discuss concerns instead of hunkering down for war.

Trade mark oppositions can also take up resources that may be better directed elsewhere, so it is worth considering the merits of withdrawing your application. If you don’t stand a good chance of success in the opposition and co-existence is not possible, it could be more practical to drop the application and look at a new brand.

There’s a phrase about preparation and performance, which I won’t repeat here, but preparation is also a key consideration during the trade mark registration process. It’s possible to avoid the risk of an opposition altogether, as completing clearance searches before the application is filed can inform you of any potential issues. If a clearance search highlights a potential opposition threat, the application can be amended to reduce any conflict or the application simply not made (saving you time and money).

All lawyers at Briffa are well versed in trade mark opposition matters. Having acted for both sides of opposition cases in the past puts us in a good position to offer pragmatic and commercial advice. If your trade mark has been opposed, or you are considering opposing an application, why not contact us today for a free consultation from one of our experts.

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