The Complete Guide to Trade Mark Oppositions

What is a trade mark opposition?

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.

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 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:

• 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 is the procedure for opposing a trade mark application?

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:

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 is between £100 and £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 a counterstatement (Form TM8). This must be done within two months from them receiving the notice of opposition. It is possible to extend this period of time for a maximum of an extra 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. Appealing to the High Court, on the other hand, may be appealed further to the Court of Appeal, and then potentially again to the Supreme Court. This will all, of course, incur further time and costs. The appeal process can be discussed in more detail if needed.

If you choose to go ahead with an opposition, Briffa will advise and guide you through all these steps.

What happens if I decide not to file an opposition?

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.

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.

This guide was written by Laura Gathercole and Ramsay Monime.