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 at the Intellectual Property Office (UKIPO) under the “absolute grounds” (e.g. can the mark actually function as a trade mark?). It 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?). In fact, the UKIPO will write to the owners of similar trade marks to notify them your application has been published. This will provide those owners with the opportunity to consider whether or not they wish to oppose your application. It will also be possible for other trade mark owners and owners of unregistered trade marks to try and oppose your application if they wish.

It’s during this period that most issues arise. 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 be taken to avoid a dispute.

Alternatively, they may simply opt to file an official trademark opposition. They will have 2 months from the date your application was published to file their opposition (Form TM7). Alternatively, the owner of the earlier mark can extend the 2 months to 3 months by filing a Notice of Threatened Opposition (Form TM7A) with the UKIPO before the 2-month deadline expires. In this post, we’ll explain what to do if this happens, and your trademark application is officially 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. Generally speaking, there are several options available to you:

  1. Withdraw your trade mark application before the deadline. This would mean you would not need to defend an opposition claim. You could then re-brand your business if you wished (completing clearance checks where appropriate).
  2. Negotiate a commercial settlement with them. Where appropriate, this may involve asking the opponent if they will agree to extend the deadline to file your defence to the opposition for at least 3 months so you can enter into the “cooling off period”. In the event your attempts to achieve a commercial settlement fail, you will again need to decide whether to withdraw your application or formally defend the opposition.
  3. Formally defend the opposition. You will ordinarily need to file your defence and counterstatement (Form TM8) within 2 months of receiving the formal opposition.

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 crucial 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. However, the filing of the TM9c, which can only be done if both parties agree, is a precious tool as it allows a period of 9 months to negotiate a settlement. Again, your legal representative can 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, so often, with a pragmatic approach, it can be possible to work out settlement terms 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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