What’s a trade mark opposition

Written by Samuel O’Toole | March 28, 2023

Trade Marks

Trade mark oppositions are a crucial aspect of the trade mark system in the UK (and most of the world) as it is up to trade mark owners to police the trade mark register.  A trade mark opposition is an administrative proceeding where a trade mark right holder opposes the registration of a trade mark application.  There are a few important things to note about trade mark oppositions in the UK:

First, the opposition of a trade mark can only be done during the application publication stage. This is a 2 month window before the application becomes registered and so its important to keep the dates in mind. Whilst it is possible to object to a registered trade mark, via cancellation proceedings, its usually best to object to a trade mark in the application stage to stop the would be owner from becoming too attached to the brand.

To commence a trade mark opposition, a party will need to file a notice of opposition with the UK Intellectual Property Office (IPO) within two months of the trade mark application being published. The notice of opposition must include the grounds for opposition, such as the opposing party’s earlier trade mark right and an explanation of how those rights would be infringed by way of the registration of the trade mark application (for example that it would be likely to cause confusion among consumers).

Once the notice of opposition has been filed, the IPO will notify the applicant and give them the opportunity to file a counter-statement. This counter-statement must be filed within two months of receiving the notice of opposition.

Following the counter-statement, the IPO will then provide both parties with the opportunity to submit evidence and arguments to support their case. This evidence can include witness statements and exhibits and it often pays off to have a well prepared statement as generally there is no “live” evidence in a trade mark opposition.

If the opposition cannot be resolved through negotiations between the two parties (most often its sensible to explore any differences of opinion), a hearing or determination on the papers will be scheduled. The decision will be made by a hearing officer appointed by the IPO, who will make a decision based on the evidence and arguments presented by both parties.

If the opposition is successful, the trade mark application will be refused. If the opposition is unsuccessful, the trade mark will be registered. Trade mark oppositions can be time-consuming and complex.

It’s always best to seek specialist advice before filing an opposition, to ensure that you have a strong case and that it is worth pursuing. Luckily our team of expert lawyers at Briffa are well versed in opposition proceedings and offer a free consultation, why not contact us today to see how we can help.

Written by Samuel O’Toole – Associate

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