I Want to Oppose a Trade Mark Application

I want to oppose a trade mark – what should I do?

We are frequently contacted by trade mark owners who want to know about opposing an application to register a conflicting trade mark. This article looks at some circumstances in which formal opposition is justified, and others in which doing nothing might be the better option.

Why file an opposition?

Thoughts commonly turn to opposition upon receiving a notification from the UKIPO of a pending application, the logic being that the fact that the UKIPO took the trouble to send the notification must mean that there is a problem, and that something must be done. 

This is an understandable response, as the purpose of the notification is of course to give an existing rights owner the opportunity to block an application to register a potentially conflicting trade mark. However, the notification does not inevitably mean that grounds for opposition exist, and there is certainly no obligation for the earlier rights owner to take action.

Although the notification will have arisen from the examination of the later application by the UKIPO, during which the examiner identified the existing right as potentially conflicting with the mark applied for, the reality is not always straightforward. For example, differences between the trade marks, or between the goods or services, will often be significant enough for no tangible risk of commercial conflict to exist. Other possibilities are where the existing mark is vulnerable to cancellation if it hasn’t been used for some time, which makes it unusable as a basis for an opposition.

You may also think of filing an opposition if you hear of a new competitor which has a trade mark application, or if you instruct a trade mark watch to monitor for conflicting applications (a service which we provide).

In any event, before taking things further, it is important to take a step back and make a dispassionate assessment of first, whether formal opposition is possible, secondly, whether it is justified, and finally, whether other options exist.

Alternatives to opposition

If, having assessed the situation, the conclusion is reached that something needs to be done about the pending application, this still doesn’t mean that opposition is the best option. It may be that all concerns could be addressed by amending or deleting some of the application’s goods or services.  Maybe it would be enough to reach an agreement with the applicant that the mark applied for will have restrictions on its use, perhaps avoiding certain colour schemes or orientations. Ultimately it is up to the trade mark owners to decide what will work for them commercially.  

Even where a pragmatic solution is preferred, it may still be appropriate to file a formal opposition in order to keep all options open for the owner of the senior trade mark while terms of settlement are worked out.

No, really, we want to prevent this trade mark from getting onto the trade marks register

If, having considered all the options, the unavoidable conclusion is that the pending application cannot be allowed onto the register, there are still some things to do before filing the opposition. 

Unless there are reasons not to, it is advisable to give the applicant notice that an opposition is being considered. This can be done by direct contact, or by filing a Notice of Threatened Opposition. The Notice of Threatened Opposition has the double effect of extending the opposition period by one month, and giving formal notice to the applicant that an opposition is possible. Giving formal notice will be relevant if the eventual opposition is not defended: if the applicant was not warned that opposition was possible, the opponent will not be awarded costs by the UKIPO. 

The advantage of making direct contact with the applicant is that it is an opportunity to discuss how the opposition might be avoided, for example, by amending the scope of the application. 

The opposition itself

The time has come to file the notice of opposition, which involves filing the relevant paperwork at the UKIPO and paying the relevant fee.  An opposition can be based on various grounds, including:

• the respective trade marks are identical, and cover identical goods or services
• the overall similarity of the trade marks, and the goods or services, is such that the consumer is likely to be confused as to the commercial origin of the goods or services
• the mark applied for is too similar to another mark or sign, which can include unregistered trade marks, copyright and designs.

Opposition can also be based on reasons relating to the inherent registrability of the mark applied for, which will be dealt with in a separate article.

What happens after the opposition has been filed?

The UKIPO will examine the opposition to make sure that all formalities are met, then forward a copy of the opposition papers to the applicant. A defence must be filed within the time allowed, otherwise the opposition will be considered successful and, provided the applicant was given notice of the opposition, an award of costs made in favour of the opponent.

Cooling off

The UKIPO opposition process incorporates a so-called ‘cooling off period’, which enables the parties to effectively put the opposition on hold for up to 18 months while they explore terms of settlement.  Many oppositions are resolved during this period.

If cooling off is not entered, or it ends without the opposition being resolved, the applicant must then file the defence in order to keep things going. The parties then take turns to file evidence in support of their respective positions.  Even now, if the parties decide that they would like to explore settlement, the opposition can often be suspended, provided the UKIPO can be persuaded that the suspension is justified, and that there is a realistic chance that the opposition will be settled within the suspension period. 

Once the evidence rounds are complete, the UKIPO will consider the parties’ submissions and issue a decision.   As with all UKIPO decisions, either party has the right to file an appeal against an unfavourable decision.

If I win an opposition will the other side have to stop using their trade mark?

In theory, successfully opposing a trade mark application does not stop the other side from continuing to use a particular trade mark. A separate legal action for trade mark infringement would be required for that. However, in practice, if you win a trade mark opposition, the other side would have to be quite brave to continue using their mark. Furthermore, most trade mark oppositions are settled in correspondence and that would usually include reaching agreement about what would happen next. Therefore, in practice, trade mark oppositions usually have the effect of resolving issues without recourse to the Courts.

We have another article which provides more detail on the UK trade mark opposition process.

We routinely file and defend trade mark oppositions in the UK - and act through our network of associates throughout the world for international disputes. If you are thinking about filing a trade mark opposition, or have been opposed, please do not hesitate to get in touch.

Author: Liz Lowe, Chartered Trade Mark Attorney