How To Oppose a UK Trade Mark Application
If you are thinking of applying for a trade mark in the UK, you may wonder what are the risks of your application being challenged by a third party who claims to have prior rights over the same or a similar mark.
Alternatively, you may be concerned that someone else is trying to register a trade mark that is identical or confusingly similar to yours, and you want to know how to stop them.
In this blog post, we will explain the basics of conflicts and opposition of trade mark applications in the UK, and how we can help you protect your brand.
What is a Trade Mark Conflict?
A trade mark conflict occurs when two or more parties claim rights over the same or a similar sign for the same or similar goods or services. A sign can be a word, logo, shape, colour, sound or any other distinctive element that identifies the origin of a product or service. A trade mark conflict can arise at different stages:
- Before applying for a trade mark, you should conduct a clearance search to check whether there are any existing registered or unregistered trade marks that could prevent your application from being accepted or opposed by their owners.
- After applying for a trade mark, your application will be examined by the UK Intellectual Property Office (UKIPO) to check whether it meets the legal requirements for registration. The UKIPO may raise objections based on absolute grounds, such as lack of distinctiveness or descriptiveness of your mark, or relative grounds, such as similarity to an earlier trade mark.
- Once your application has passed the examination stage, it will be published in the Trade Marks Journal for two months (extendable to three months on request), during which any third party can oppose its registration on absolute or relative grounds.
What is a Trade Mark Opposition?
A trade mark opposition is a formal procedure before the UKIPO where a third party challenges the registration of a trade mark application on the basis of their prior rights. The grounds for opposition can be:
- Absolute grounds: These are defects in the trade mark itself that make it unsuitable for registration, such as being descriptive, generic or non-distinctive. Anyone can oppose a trade mark application on absolute grounds.
- Relative grounds: These are conflicts with earlier trade marks or rights owned by the opponent, such as being identical or confusingly similar to an existing registered mark or infringing an unregistered right established under passing-off. Only the owner of an earlier trade mark or right can oppose a trade mark application on relative grounds.
How to File an Opposition to a UK Trade Mark Application?
If you want to oppose a trade mark application, ideally you should seek the advice and guidance of a Chartered Trade Mark Attorney to ensure all the correct processes are followed.
You will need to file a notice of opposition within specified time of the publication date of the application which can be extended by filing a notice of threatened opposition. You must also pay a fee appropriate to the opposition you are filing as well as stating the grounds and facts on which you rely, and provide evidence to support your case.
How to Defend an Opposition to a UK Trade Mark Application?
If your trade mark application is opposed by a third party, you must file a notice of defence and counterstatement within a specified date of receiving the notice of opposition. You must also pay a fee. You must respond to each ground and fact raised by the opponent and provide evidence to support your case.
What are the Possible Outcomes of an Opposition?
After both parties have filed their evidence and submissions, the UKIPO will conduct a hearing in person if either party requests one or make a decision in writing on the evidence provided. The possible outcomes are:
- Before a decision is made, the parties reach an amicable settlement and withdraw their respective claims in advance of a hearing.
- The opposition is successful, and the application is refused in whole or in part.
- Without an agreement, the opposition is unsuccessful and the application proceeds to registration in whole or in part.
The UKIPO may also award costs to the successful party, depending on the circumstances of each case.
How Can Tennant IP Help You?
At Tennant IP, we are a national Chartered Trade Mark Attorney practice based in Newport, South Wales. We have extensive experience in handling trade mark conflicts and oppositions in the UK and internationally. We can assist you with:
- Conducting clearance searches and advising you on the availability and registrability of your trade mark.
- Applying for and registering your trade mark in the UK and abroad.
- Monitoring your trade mark and alerting you of any potential conflicts or infringements.
- Opposing or defending any trade mark applications that may affect your rights.
- Negotiating settlements and drafting agreements to resolve any disputes.
If you need any advice or assistance with your trade mark matters, please do not hesitate to contact us today. We would be happy to discuss your needs and offer you a free initial consultation.
