Receiving a notice of threatened opposition TM7A

‘Help, I’ve been opposed!’ …… the notice of threatened trade mark opposition and how to respond

We are often contacted by trade mark applicants who have received a notice of threatened opposition, form TM7A, from the UK IPO, and don’t know what to do. This article aims to explain what a threat of opposition means, and to outline what you can do in response.

It’s not an opposition

It is not unusual for the receipt of official-looking correspondence from the UKIPO to cause a mild panic, followed by an assumption that the recipient’s trade mark application has been opposed and that, actually, it’s all a bit of a disaster.

Happily, this is usually not the case. 

The first thing to remember is that the form TM7A is not a formal notice of opposition, it’s just an expression of someone’s intention to oppose a trade mark application. The only legal effect it has is to extend the opposition period for the trade mark application by one month to three months from the date of publication. Moreover, the extra time is only available to the party who filed the form, it is not a general extension that benefits any would-be opponent.

The form contains relatively little information, which can make it difficult to work out exactly what is going on.  However, a quick check of the UK trade marks register – and maybe an online search - will more often than not identify any trade marks belonging to the potential opponent, which can in turn offer some guidance as to the grounds on which an eventual opposition might be based.  Of course, not all potential oppositions are based on earlier registered trade marks, or earlier pending applications, and in the case of unregistered rights, it can be harder to work out the basis of the potential complaint. 

What do I have to do?

Nothing. Not at this stage, anyway. The UK IPO does not require a response, and there is no obligation to contact the potential opponent, or indeed to do anything to your trade mark application.  While it can be worthwhile to try and work out what the basis of an eventual opposition might be, in case an immediate solution exists, the best option is nearly always to wait.

But it looks serious….

The TM7A can be alarming, and it is true that there is sometimes a problem that will need to be addressed.  However, in many cases things will not be as bad as they initially seem.

Trade marks that belong to the party that filed the TM7A will often have been identified by the UKIPO during examination as potentially conflicting with the pending application. However, not all of such trade marks are, in reality, problematic, and not all of them will form a valid basis for opposition. For example, an existing trade mark that has been on the register for at least five years, but which has not been used in commerce in relation to the goods or services covered by the registration, cannot form the basis of a successful opposition. Even where the TM7A has been filed by a trade mark attorney or other representative, it does not always follow that an eventual opposition would be successful, and it is certainly the case that notices of threatened opposition are sometimes filed in order to try to intimidate an applicant – particularly an unrepresented one – into withdrawing an application. However, it is also common for the TM7A to be filed as a way of buying time for the earlier rights owner to think about whether they wish to oppose a later application. 

In short: receiving a notice of threatened opposition is not always bad. 

Should I negotiate?

Some would-be opponents will contact the applicant with a request that, for example, the application be withdrawn or amended.  Such requests are generally worth paying attention to, as they may indicate that formal opposition is being seriously considered.  However, again, not all requests are reasonable or justified, and the situation should be considered calmly before deciding how to respond.  Even an unacceptable request can mark the start of a useful dialogue with the other party that may lead to the satisfactory resolution of the matter. 

What if it really is serious?

If it looks as if a formal notice of opposition is going to be filed, and that it seems to have a reasonable prospect of success, the options are a little different.

As a first step, we recommend discussing the situation with your legal adviser, who will be able to assess the merits of the opposition, and advise on any mitigating factors and potential counterclaims that may not be immediately apparent. This is usually best done after a formal opposition has been filed and found admissible by the UKIPO, when a copy of the opposition papers that set out the grounds of opposition in full, including details of the claimed earlier rights, will be provided. 

However, it is sometimes immediately apparent that an opposition has every chance of success, in which case the best option may be to withdraw the application without delay, and before formal opposition is filed.

Where the outcome of the opposition is less clear, it can be worth initiating a dialogue with the opponent to explore terms of settlement.  The UK opposition process incorporates a useful ‘cooling off period’ when the opposition is effectively put on hold while the parties discuss how the conflict might be resolved. However, sometimes the only option is to defend the application.

Further advice

For further information and advice, please contact Chartered Trade Mark Attorneys Liz Lowe or Fiona Jones or complete our contact form.