What should I do if I receive an opposition to my trade mark application?

When you apply for your UK trade mark at the UK Intellectual Property Office (UKIPO), they will usually publish it for opposition purposes within a couple of months. 

What happens when the trade mark application is published? 

The UKIPO will write to the owners of similar trade marks to notify them your application has been published. This will provide those owners to consider whether or not the wish to oppose your application. It will also be possible for other trade mark owners and owners of unregistered trade marks to try and oppose your application if they wish.  

What’s the deadline for someone to oppose my application? 

They will have 2 months from the date your application was published to file their opposition (Form TM7). Alternatively, the owner of the earlier mark can extend the 2 months to 3 months by filing a “Notice of Threatened Opposition” (Form TM7A) with the UKIPO before the 2-month deadline expires. 

What are my options if I receive a TM7A? 

Each of our clients’ cases need to be assessed on their own merits and facts, so there is not a one size fit all approach. 

However, the situation below proceeds on the basis the opposing party has already filed the TM7A and they have 3 months from the date of your trade mark being published to file their formal opposition (TM7).  

Generally speaking the following options available to you will be:- 

1. Withdraw your trade mark application before the 3 month deadline. This would mean you would not need to defend any opposition you may receive before that deadline. We could then help you re-brand your business if you wished (completing clearance checks where appropriate). 
2. Do nothing and wait and see if the other party files a formal opposition by the deadline. Alternatively, you could try and reach out to the other party on a strictly “without prejudice” basis to see if you can resolve the dispute early on before matters escalate.  
3. If the opponent files the opposition you could try to negotiate a commercial settlement with them. Where appropriate, this may involve asking the opponent if they will agree to extending the deadline to file your defence to the opposition for at least 3 months so you can enter into the “cooling off period”. In the event your attempts to achieve a commercial settlement fail, you will again need to decide whether to withdraw your Trade Mark Application or formally defend the opposition.  
4. Formally defend the opposition. You will ordinarily need to file your defence and counterstatement (Form TM8) within 2 months of receiving the formal opposition. 

 Please feel free to contact us if you would like to discuss the TM7 or TM7A you have received. 

Written by Daniel Crate – Solicitor