Received an opposition notice to your trade mark application? Here’s what to do next

Brand building takes time. So, when a letter arrives informing you that someone is challenging your trade mark application, the instinct is often to feel blindsided. But opposition notices are a normal feature of the trade mark system, and how you respond in the first few days matters more than you might think.

TM7 or TM7A?

Before anything else, check which document you are dealing with because there is an important distinction.

• A Form TM7A is a Notice of Threatened Opposition. It is not a formal challenge; it is a warning that a third party intends to oppose your application. Filing a TM7A automatically extends the opposition window by one month (so count three months from the publication date of the trade mark application), buying the potential opponent more time to prepare. This is an ideal time to instruct an intellectual property lawyer to assist, especially if the opponent has legal representation.
• A Form TM7 is the formal notice of opposition filed with the UKIPO, setting out the grounds on which your application is being challenged. Common grounds include an argument that your mark is too similar to one the opponent already owns, that it would take unfair advantage of an established reputation, or that it lacks the distinctiveness required for registration. Identifying which grounds apply to your situation shapes everything that follows.

If an opponent has not written to you or filed a notice of threatened opposition (TM7A) prior to issuing a formal notice of opposition (TM7), make sure to keep a note of this. If you subsequently withdraw your application, the UKIPO should not make a costs award against you for withdrawing the application.

Key deadlines

Trade mark opposition proceedings run on fixed timetables with very little flexibility. Waiting to see what happens is one of the most damaging mistakes an applicant can make. Once a TM7 is served, identify your response deadline immediately and work backwards. You will need time to take legal advice, assess your position, and decide on your next move.

The deadline to file a defence and counterstatement to the notice of opposition is generally 2 months. Accordingly, it is vital that you do not miss this deadline, regardless of whether negotiations are taking place or not.

Consider requesting a cooling-off period

One of the most underused tools available after receiving a TM7 is the formal cooling-off period. Where both parties agree, proceedings can be paused for up to nine months to allow structured negotiations to take place. Requesting a cooling-off period early, before positions become entrenched, is usually the wisest move.

Know your opponent and think commercially

The best outcomes in opposition proceedings rarely come from treating the dispute as a purely legal battle. Ask yourself: how central is this specific mark, in its current form, to your business? Could a modest adjustment – such as narrowing the goods or services covered by your application – remove the conflict without undermining your commercial objectives?

It is also worth bearing in mind that there is often a meaningful gap between the goods and services listed in your specification and what you offer in the real world. For example, an opponent may require you to remove class 25 (clothing, footwear) etc. from your application but may not take issue with you selling clothes with your trade mark on. However, if the opponent primarily offers clothing, they may also require you to undertake not to offer clothing with the trade mark affixed in the future.

Continuing the fight

If negotiations are unsuccessful and the parties must continue with the opposition process, the quality of your evidence can be the difference between winning and losing. Trade mark oppositions are resolved primarily on the papers – witness statements, documentary evidence, and written submissions – with limited opportunity to introduce new material later. Early preparation is therefore essential.

Withdrawing a trade mark application

There are situations where withdrawing the application and rethinking your brand strategy is the most commercially sensible decision. A fresh approach, underpinned by a thorough trade mark clearance search, puts you in a far stronger position than pressing ahead with a protracted and costly opposition process.

Bear in mind that when you withdraw a trade mark application, the UKIPO may make a costs award against you. The amount will generally be determined by the stage of proceedings. The earlier you withdraw your application, the lower the costs award is likely to be.

Comment

An opposition notice is a prompt to act decisively, not a signal that your application is doomed. We recommend responding quickly, take specialist advice early, and keep your commercial objectives in view throughout.

If you receive a TM7A or a TM7, please do not hesitate to get in touch and one of our specialist IP solicitors will be glad to assist.