What To Do If You Receive a Trade Mark Opposition Notice

What is a trade mark opposition notice?

When you apply to register a trade mark in the UK, your application is examined by the UK Intellectual Property Office (UKIPO) and then published so that others can see it. A trade mark opposition notice (or TM7A) means that someone believes your trade mark should not be registered. They may think it is too similar to a mark they already own, or that it could cause confusion among customers. Importantly, the notice is simply the start of the process and is not a final decision.

Receiving an opposition notice does not mean you have lost your trade mark. Many oppositions are resolved without ever reaching a full hearing, and plenty of applicants go on to secure their registration.

What are your next steps?

You broadly have three options:

• Defend your application: File a counterstatement setting out why you believe your trade mark should proceed to registration.
• Negotiate: Enter discussions with the opposing party to see whether a compromise can be reached to facilitate co-existence, such as agreeing to limit the goods or services covered by your mark.
• Withdraw: If the opposition is strong and the costs of fighting it outweigh the benefits, you may decide to withdraw your application, either in full or in part.

Each situation is different, and the best course of action will depend on the strength of both your position and theirs.

Keep an eye on deadlines

The UKIPO process runs to strict timetables. Once you are notified of the opposition, you generally have two months to file your defence (known as a counterstatement). If you miss that deadline, your application may be treated as abandoned for the goods or services that have been challenged. In some cases, both sides can agree to a “cooling-off period”, i.e., extra time to try to reach a settlement before formal proceedings go further. Either way, acting promptly is essential to avoid inadvertently abandoning your application.

Get in touch

Trade mark opposition proceedings involve procedural rules, evidence, and legal arguments that can be difficult to navigate on your own. Our specialist solicitors can assess the merits of the opposition, help you understand your chances of success and guide you through each step, from filing your defence to negotiating a resolution.

If you have received a trade mark opposition notice (or you are worried that one may be on the horizon) we are here to help at Briffa, get in touch at info@briffa.com or fill out our contact form.