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 use of a brand, are a valuable commercial asset and help us as consumers distinguish products from one business to another. The registration procedure in the UK is also relatively straight forward: an application is made which will then be examined by a trade marks examiner under the “absolute grounds” (eg can the mark actually function as a trade mark) and will then be published for third parties to take objection under the “relative grounds” (eg does your application tread on the toes of a third party trade mark right).

Its during the publication period that most issues can 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 trade mark applicant to explain their concerns over the trade mark application and request that some action is taken, or they may simply opt to file the opposition – but what should I do if I receive an opposition I hear you ask.

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 and so to preserve the trade mark application its important to make a timely filing.

We would recommend to file 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 settlement can be negotiated. Again, your legal representative will be able to help advise you on what is best for your opposition.

Another key recommendation in trade mark oppositions is to always consider settlement, only a small number of oppositions actually make it all the way to a UKIPO decision. Oppositions are generally rather slow 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, as such it is also advisable to consider the withdrawal of your application. If you don’t stand good prospects of success in the opposition and co-existence is not possible, it could be more resource effective 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 of trade mark oppositions. Good research and clearance searches done before the application is filed can inform you of any potential oppositions – in turn this can help to avoid oppositions as either the application could be amended to reduce any conflict or the application simply not made.

All lawyers at Briffa are well versed in trade mark opposition maters, acting for both sides of oppositions also puts us in a good position to offer pragmatic and commercial advice. If your trade mark has been opposed, or you are thinking about opposing an application, why not contact us today for a free consultation from one of our expert lawyers.

Written by Sam O’Toole, Associate

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