Written by Ramsay Monime | May 30, 2022
When someone files a trade mark application, it is initially examined by the Intellectual Property Office (IPO) and then published in the Trade Mark Journal. There is then a period of two months (extendable by one month by filing Form TM7A) called the opposition period, where a party can file an opposition to the trade mark application.
Normally, someone will want to oppose an application if they consider that the trade mark in question is similar or identical to a trade mark they already own. The problem with someone else having a similar mark to yours is that it can cause confusion between the two brands, and one may be mistaken for the other, especially if they operate within the same field. You can use BriffaWatch, our trade mark watching service, to identify applications for trade marks similar to your own, which you consequently may wish to oppose.
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 which 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:
From a practical perspective, in the first instance, it may be worth simply instructing your legal representatives to write to the applicant and ask if they will consider withdrawing their application. If they agree, this saves time and money on pursuing an opposition action.
It is also possible to propose co-existence. This 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.
If those options are unsuccessful or not viable, the opposition process is outlined below:
If you choose to go ahead with an opposition, Briffa will advise and guide you through all these steps.
If the application does not face any opposition, the application will proceed to registration. After this has happened, it is possible to initiate an invalidity action so long as it has not been more than five years after registration. This action is more costly and potentially more difficult to succeed with than filing an opposition. If it has been longer than five years since registration, the applicant may be able to rely on a defence of statutory acquiescence.
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?
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.
This guide was written by Laura Gathercole and Ramsay Monime.
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