Trade Mark Opposition Evidence Pitfall

When trade mark applications are accepted for publication by a trade marks examiner, the next step in the lifecycle is for that application to be published in the trade marks journal. The publication of a trade mark application represents an opportunity for third party rights holders to oppose the registration of the application.

Trade mark oppositions are fairly streamline, it starts out with the exchange of a statement of grounds/counterstatement (that sets out each parties case) and then there is an exchange of evidence before the UK Intellectual Property Office (“UKIPO”) will make a decision.

Although some oppositions do not require evidence, in some oppositions evidence is a make or break point. For example, a party relying on section 10(3) of the Trade Marks Act 1994 (“TMA”) (i.e. that their mark has a “reputation”) will be required to evidence that the reputation does actually exist. Equally, a party who’s trade mark is subject to “proof of use” will need to evidence that its trade mark has actually been put to genuine use. The UKIPO’s Trade Mark Manual makes the position very clear in that the “failure to file evidence in respect of those grounds which are entirely dependent on evidence to support and substantiate the claims will result in the opponent being deemed to have withdrawn the opposition.”

A good example on how evidence can make or break an opposition can be found in recent opposition decision number O/0385/25 (Eros Bodyglide). In this opposition, W Sternoff LLC relied on five trade mark registrations (covering the marks BODY GLIDE, BODYGLIDE, FOOTGLIDE and SKINGLIDE) to oppose Peter Kertels’ application for Eros Bodyglide.

The first four of W Sternoff’s trade marks were subject to proof of use (as they completed their registration process over five years before Mr Kertels’ application was filed) and W Sternoff also claimed a reputation within its mark (under section 10(3) of the TMA). These two points meant that W Sternoff needed to file evidence showing its marks had been put to genuine use and had a reputation. W Sternoff filed evidence stating that it has created and sustained a high share of the relevant market – unfortunatley the documentary evidence supporting that claim didn’t quite come true.

A good illustration is at paragraph 39 of decision number O/0385/25, at this paragraph the Hearing Officer considered W Sternoff’s turnover figures which were expressed to relate to the BODYGLIDE trade marks. The Hearing Officer took a closer look at the suggested turnover figures along with the corresponding invoices and noted that although the invoices showed the wording BODYGLIDE they covered some goods that were not in the BODYGLIDE range of goods as references were made to “‘Chamoisglide” and “‘Footglide”. Further, the Hearing Office noted that the destination of sale was not confirmed due to redactions made to the invoices (it’s quite important to demonstrate UK sales).

Following a thorough review of the evidence, the Hearing Officer found at paragraph 56 that “Taking all of the above into account, I am not satisfied that the opponent has provided sufficiently solid evidence in order to demonstrate that it has genuinely used any of its marks in the relevant territory during the relevant period.”

This left W Sternoff being in the position of having to rely on its SKINGLIDE trade mark in the opposition as that trade mark was not subject to proof of use. The Hearing Officer went onto compare the SKINGLIDE trade mark against Mr Kertels’ application for Eros Bodyglide and found that there was no likelihood of confusion between them and that “W Sternoff’s failure to prove that it has genuinely used its marks in the relevant territory results in the section 5(3) ground falling away”.

The Hearing Officer then concluded at paragraph 125 that the opposition failed leaving Mr Kertels’ application for Eros Bodyglide free to proceed to registration and with a costs award being made against W Sternoff.

Although evidence is not needed for all oppositions, where it is needed it will need to be prepared with the view to evidencing genuine use and reputation in a clear and comprehensive manner. Often when deciding to oppose an application it can pay off to glide (pun intended) through the evidence that is available to fully assess the merits and strategy – if the evidence is difficult to obtain or simply isn’t there then the strategy will likely need to be reworked.

If you would like help to file trade mark applications and/or oppositions, we are here to help. Just get in touch at info@briffa.com or through our website form.

Written by Senior Associate Sam O’Toole