The Complete Guide to Trade Mark Oppositions

This is your comprehensive guide on trade mark oppositions in the UK. In the ever-evolving landscape of business and intellectual property, protecting your brand is paramount. A trade mark serves as a distinct identifier, representing the essence of your products or services in the marketplace. However, with a growing number of trade marks being registered each year, conflicts and overlaps are inevitable. This is where the UK’s trade mark opposition procedure becomes crucial, so let’s dive into it.

What is a trade mark opposition?

A trade mark opposition is an administrative proceeding where an entity opposes the registration of a trade mark application. More often than not, oppositions come from pre-existing markholders.

Trade mark applications can only be opposed during the application’s publication stage, which is a 2-month window before the application becomes registered (extendable by one month by filing Form TM7A). Whilst it is possible to object to a registered trade mark, via cancellation proceedings, it is usually best to object during the publication stage to stop the would-be owner from becoming too attached to the brand.

To commence a trade mark opposition, the opposition will need to file a notice of opposition with the UK Intellectual Property Office (IPO) within two months of the trade mark application being published. The notice of opposition must include the grounds for opposition, such as the opposing party’s earlier trade mark right and an explanation of how those rights would be infringed by way of the registration of the trade mark application (for example that it would be likely to cause confusion among consumers).

Once the notice of opposition has been filed, the IPO will notify the applicant and give them the opportunity to file a counter-statement. This counter-statement must be filed within two months of receiving the notice of opposition.

Following the counter-statement, the IPO will then provide both parties with the opportunity to submit evidence and arguments to support their case. This evidence can include witness statements and exhibits and it often pays off to have a well-prepared statement as generally there is no “live” evidence in a trade mark opposition.

If the opposition cannot be resolved through negotiations between the two parties (most often its sensible to explore any differences of opinion), a hearing or determination on the papers will be scheduled. The decision will be made by a hearing officer appointed by the IPO, who will make a decision based on the evidence and arguments presented by both parties.

If the opposition is successful, the trade mark application will be refused. If the opposition is unsuccessful, the trade mark will be registered.

What are the grounds for a trade mark opposition?

A party can oppose a trade mark application on the basis that the mark in question is identical to or confusingly similar to a mark that they already own (there are additional grounds if the applicant has a substantial reputation, in that it can rely on its reputation to oppose the application). Only the owner of the existing mark may oppose on this basis.

Grounds for trade mark opposition, which anyone may use, include:

• Lack of distinctiveness, i.e. the mark is not distinctive enough to distinguish the goods or services from other similar goods or services;
• If the mark is descriptive of the goods or services;
• Where the mark has become customary for describing that product, for example, ‘hoover’ for vacuum cleaners;
• If a mark has been registered in bad faith; or
• Where the mark infringes someone’s prior unregistered rights, for example, if they have been using a mark and built up goodwill in that mark, this may confer unregistered rights.

What about co-existence?

Before and even after opposition proceedings are commenced, it is possible to propose and negotiate co-existence. Co-existence entails the applicant and opponent entering into a co-existence agreement, where it is normally agreed that the applicant will only trade in certain fields to ensure there is no confusion between trade marks.

We strongly recommend you seek legal assistance, even during co-existence discussions because what is discussed during these negotiations can significantly impact the trajectory and outcome of the matter. We also recommend that such discussions take the form of written letters, carefully drafted by your legal representatives. Speaking through legal representation can be a helpful show of force that can encourage the other side to take your legal position seriously and can prevent you accidentally saying something that could damage your position.

To encourage co-existence, the UK IPO offers a ‘cooling-off period’, which can be applied for provided both parties agree. If applied for, the ‘cooling-off period’ places a pause on opposition proceedings for 9 months, giving the parties extra time to discuss.

What is the procedure for opposing a trade mark application?

If you are considering opposing a trade mark application, it may be worth simply instructing your legal representatives to write to the applicant in the first instance and ask if they will consider withdrawing their application. If they agree, this saves time and money on pursuing an opposition action.

If this is unsuccessful, and co-existence is not a viable option, an opposition process can be commenced, as outlined below:

1. The notice of opposition (Form TM7) is filed by the opponent, along with the basis on which the application is being opposed (the statement of grounds). The official IPO fee for filing Form TM7 costs between £100 to £200, depending on the grounds of opposition.
2. This notice will be checked by the IPO, and if all is ok, they will send the notice of opposition with the statement of grounds to the applicant.
3. The applicant then has to file a formal notice of defence and counterstatement (Form TM8). This must be filed within two months from the applicant receiving the notice of opposition. It is possible to extend this period for up to 18 months in order to facilitate negotiating a settlement if the parties wish. This is referred to as the ‘cooling-off period’ and may be terminated at any time by either party. The opponent will then have a further two months to respond to the applicant’s reply.
4. Next, a timetable for evidence is set by the IPO. This is where evidence is submitted in support of the opposition. This is normally for a period of two months, but it may be extended upon request. Evidence is usually provided in the form of a witness statement. If your application is based on a registered mark you own, and the mark is older than five years, you will need to provide evidence showing you have used the mark. This evidence can include sales figures, turnover, and any relevant marketing or advertising. In this case, if there is no evidence of use, the opposition will fail.
5. The parties will then be invited to file written legal submissions (legal arguments), or either party may request an oral hearing.
6. The IPO will then make their decision usually after around six months, but it can be longer.
7. Either party may appeal this decision by requesting a written statement of grounds (for an official IPO fee of £230) within 28 days. This appeal can either be to an appointed person or the High Court. An appointed person is an experienced trade mark practitioner who is appointed by the IPO. A decision made by the appointed person cannot be further appealed. Whereas appealing to the High Court can be appealed further to the Court of Appeal, and thereafter the Supreme Court. This will all, of course, incur further time and costs.

If you choose to go ahead with an opposition, our specialist trademark lawyers can advise and guide you through all these steps.

What happens if I decide not to file an opposition?

If the application does not face opposition, the application will proceed to registration. If you wish to challenge the trade mark after registration, it is possible to initiate an invalidity action within the first five years of its registration. However, be aware that this is more costly and potentially more difficult than filing an opposition before the mark registers.

If more than five years have passed since registration, the applicant may be able to rely on a defence of statutory acquiescence. We can advise on whether this would be appropriate in your circumstances.

What if someone opposes my application?

If you are on the receiving end of an opposition action, the same practical points apply, i.e. in the first instance trying to negotiate with the opponent and come to some kind of agreeable arrangement.

If someone unfortunately does go ahead and file an opposition, you will need to respond to this application within two months. You will need to file a notice of defence, along with a counterstatement. You may then need to provide any evidence.

Briffa can defend an opposition action on a fixed fee basis, so please get in touch for further information.

See also: Help! I’ve received a Notice of Threatened Opposition, what do I do now?

How can I reduce my chances of receiving an opposition?

The best way to reduce your chances of receiving a trade mark opposition is to instruct your legal representative to conduct trade mark searches before filing your trade mark to identify any trade marks that already exist which may be identical to, or similar to, your proposed trade mark. Depending on the results of this search, if your mark returns a lot of similar results, you may wish to reconsider your filing strategy. If you do not wish to do this, or there is perhaps only one existing mark which is similar to your own, you could approach the owner before you file your application and come up with an agreement whereby the owner agrees not to oppose your application. You would probably have to agree to some terms in exchange for them doing this. If you wish to go down this route, Briffa can handle all negotiations and draft an agreement to ensure that you do not inadvertently agree to any onerous terms.

The best way to reduce your chances of receiving a trade mark opposition is to instruct your legal representative to conduct trade mark searches before filing your trade mark to identify any trade marks that already exist which may be identical to, or similar to, your proposed trade mark. Depending on the results of this search, if your mark returns a lot of similar results, you may wish to reconsider your filing strategy. If you do not wish to do this, or there is perhaps only one existing mark that is similar to your own, you could approach the owner before you file your application and come up with an agreement whereby the owner agrees not to oppose your application.

You would probably have to agree to some terms in exchange. If you wish to go down this route, it’s wise to have a solicitor handle all negotiations and draft an agreement to ensure that you do not inadvertently agree to any onerous terms.

High-profile examples of trade mark oppositions

There are countless examples of the UK trade mark opposition procedure in action. Here are some of our favourites:

• Zara vs House of Zana: This case serves as a useful example of how a brand can file a trade mark opposition against a potentially similar mark. This case also serves as an example of how a trade mark opposition, even by a large brand, can be overcome. Since the time of writing, House of Zana actually succeeded in defending its trade mark application against Zara.
• Tiffany vs Cotswold Lashes by Tiffany: In this case the bigger brand was successful in opposing a smaller brand’s application, forcing the smaller brand to change its mark. The goods and services weren’t identical but were viewed as closely linked and that similarity had the potential to confuse the public.
• Retina International vs Apple: This case is a reminder of the importance of seeking independent legal advice and assistance when faced with trade mark opposition. In this case, Retina International made a trade mark application that was opposed by Apple. Retina International remained unrepresented and went on to conduct itself in an unusual and inefficient way, allowing the matter to escalate, an opposition hearing to be scheduled and prepared for before withdrawing its application the day before the hearing. This was viewed as an abuse of process and the Registrar punished the applicant by awarding significant costs to the other side.

Summary of key points

The better you understand the trade mark opposition procedure, the better placed you will be to protect your trade marks and defend your applications. We can advise and assist every stage of the way, from the receipt or filing of a notice of threatened opposition to negotiations and, of course, the opposition process itself. If you would like to discuss a trade mark opposition strategy, please do not hesitate to get in touch with us on info@briffa.com or via a contact form, and one of our specialists will be happy to arrange a free consultation with you.

This guide was written by Cassine Bering, Laura Gathercole, Ramsay Monime, and Samuel O’Toole.