UK Trade Mark Opposition Procedure

In the UK, once a trade mark application is considered allowable by the Examiner, the application will be published for opposition purposes.  This means that interested parties may object to the mark being registered.  The application cannot be finally registered until after (i) the end of the opposition period or (ii) the conclusion of any opposition proceedings.

 

How long have I got to file an opposition?

An Opposition against any trade mark application must be filed within two months of publication of the application.  This deadline can be extended by one month by filing a Notice of Threatened Opposition within the two-month period. Submitting a Notice of Threatened Opposition does not commit the filer to proceeding with a full opposition, but the trade mark Applicant will be notified that a Notice of Threatened Opposition has been filed.

 

Do I need to contact the applicant before filing an opposition?

Generally, it is best practice to contact the Applicant prior to filing an Opposition, to see whether opposition proceedings can be avoided.  For example, the Applicant may be willing to withdraw their application or amend the list of goods and/or services.  If an Opposition is filed without the Applicant first being contacted, then an adverse cost order can be awarded against the Opponent.

The above-mentioned Notice of Threatened Opposition will be considered sufficient warning of an Opposition for cost purposes.  However, we usually recommend instructing a trade mark attorney to contact the Applicant either instead of, or in addition to filing a Notice of Threatened Opposition.

 

Caution

If a Notice of Threatened Opposition is filed, then any subsequent Opposition must be filed by the same person or entity who filed the Notice of Threatened Opposition.  Filing a notice of threatened opposition only extends the opposition period for the party that files it.  Therefore, different opponents may have different opposition periods depending upon whether or not they filed a Notice of Threatened Opposition.

 

What are the grounds of opposition?

A trade mark can be opposed on absolute grounds and/or on relative grounds.

Absolute grounds

Absolute grounds cover defects in the trade mark itself, such as the mark being descriptive of the goods and/or services for which it is to be registered, or lacking distinctiveness.

Anyone can file an Opposition based on absolute grounds.

Relative grounds

Relative grounds means that the applicant’s trade mark could conflict with an earlier trade mark or an earlier right.  The earlier right is commonly a trade mark, but does not have to be a registered right or even a trade mark.

Only the owner of the earlier right can oppose based on relative grounds.

 

What if I am only concerned about some of the goods or services?

An opponent does not have to oppose all goods and services covered by an application.  If there is only a potential conflict for some of the goods, then the opposition can be limited to just those goods.

 

How do I defend my application against an opposition?

After an Opposition has been filed, the Applicant will be set a two month period for filing a defence.  If no defence is filed, then the application will be refused if all of goods/services were opposed, or will be partially refused if only some of goods/services were opposed.

If the Opponent and Applicant enter into negotiations, then it is possible to file a request for a cooling off period.  The cooling off period further extends the deadline for the Applicant to file their defence by up to a maximum of sixteen months.  However, both parties must agree to the cooling off period.  In addition, either party may end the cooling off period early.

 

What does the Opponent need to be aware of?

Opponents should be aware that if the prior right upon which the opposition is based is more than five years old or an unregistered right, then the Applicant can request that the opponent files evidence of use of the earlier mark or right in the UK for the relevant goods/services. In addition, if the opposition is based upon a registered trade mark that is more than five years old, the Applicant could file an application for revocation of the registered trade mark, if it is not clear that it has been used in the UK in the last 5 years for the goods/services for which it is registered.

 

Evidence

Following submission of a defence by the Applicant, the Tribunal section will set a two-month period within which the Opponent must file their full grounds of opposition and any evidence to support their case, including evidence of use.  Evidence is required to be filed in the form of Witness Statements or Statutory Declarations.

The Applicant will then be given an opportunity to file their full arguments and any evidence they may have to support their case, also normally within a two-month period. 

The Opponent will then have the opportunity to file further evidence in reply, to close the evidence rounds.

 

Hearing/Written Submission

Following the evidence rounds, the Tribunal section will set a deadline by which both parties are required to either submit full written submissions or request a hearing.  Unless a case is particularly complex, a decision on the papers is usually sufficient and a lot less expensive for both parties than a hearing.  However, in some cases a hearing is more appropriate.  If a hearing is requested by either party, then the Tribunal section will schedule a hearing and will set a deadline by which both parties are required to submit their skeleton arguments. 

Following the hearing/ final written submissions, the Tribunal Section will issue decision.  The Tribunal Section will also award costs.  Cost are contributory, not compensatory, and are awarded based on a published scale.  However, the Tribunal Section does have discretion to award costs of the scale for particularly bad behaviour.

At any stage of proceedings, the Opponent can choose to withdraw their opposition, and/or the Applicant can choose to withdraw their application.  However, withdrawing late in the proceedings may have cost implications.

 

Fast Track Oppositions

If the case is relatively simply, then it is possible to file a Fast Track Opposition.  As with a standard Opposition, a Fast Track Opposition must be filed within two months of publication of the application to register the mark, or within three months if a Notice of Threatened Opposition has been filed.

A Fast Track Opposition can NOT be used if the opposition is to be based on absolute grounds.

A Fast Track Opposition can be filed based only on the following grounds:

(i)            an identical earlier trade mark, which is registered for identical goods/services;

(ii)           an identical earlier trade mark, which is registered for similar goods/services, where there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark; or

(iii)         a similar earlier trade mark, which is registered for identical or similar goods/services, where there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

A Fast Track Opposition can NOT be based on more than 3 earlier marks.

As with a standard Opposition, it is possible to request a cooling off period, if both parties agree. 

If the earlier trade mark is more than 5 years old when the Fast Track Opposition is filed, then Evidence of use of the earlier mark must be filed with the Opposition.

In addition, in a Fast Track Opposition, any evidence that the Applicant may wish to rely on to support their defence, must be filed with their defence.

In only exceptional circumstance will further evidence be allowed to be submitted or a hearing allowed.  In most cases a decision will be issued by the Tribunal Section, after the defence has been filed.  The UKIPO aim to issue a decision in Fast Track cases within 3 months of the defence being filed.

The costs awarded in Fast Track Oppositions are capped at £600 (excluding official fees).

The decision in both a standard and fast track opposition can be appealed.

Please note that the above is a high-level overview of the opposition procedure.  If you would like assistance with filing a new opposition or handling an ongoing opposition, then please contact us on mail@mathisen.co.uk.