Download Potential Opposition Against UK TM Application

Outline of Normal UK Opposition Procedure*

Unless an extension is obtained, opposition must be filed at the UK Intellectual Property Office (UKIPO) within 2 months of publication of the application**; this period is extensible by 1 month only. If based on earlier registrations over 5 years old, the opponent must indicate the products/services on which the marks have been used, or a valid reason (which will be exceptional) as to why they have not been used. It is usual to use the period before opposition is due to request the voluntary withdrawal of the application or try, if appropriate, to reach an amicable settlement. Failure to put the applicant on notice about a threatened opposition can have an adverse effect on costs awarded later in proceedings.

Within 2 months of being notified of the opposition, the applicant has to file its counterstatement in defence. If both parties agree, this deadline can be extended by 7 months, by way of a “cooling off period” so as to allow time for negotiations. A further extension of 9 months is available if both parties agree. Either party can terminate the “cooling off period” early.

If the grounds of opposition include the ground that the mark applied for is identical or there is a likelihood of confusion with an earlier mark that is for the same or related goods/services, then the IPO may give a preliminary indication as to whether it thinks the opposition will be completely successful, partially successful or not successful, on those grounds. In practice, preliminary indications are rarely issued on a routine basis, particularly in cases that are finely balanced, despite one or both parties requesting it. Alternatively, a preliminary indication may be issued even if neither party requests one. If the preliminary indication is accepted, then the opposition does not proceed further on those grounds.

If the preliminary indication is not accepted, or if the opposition is one where a preliminary indication is not issued and/or there are other grounds, the opposition proceeds to the evidence stage, with the opponent almost certainly needing to prove use of registrations that have been registered for more than 5 years.

The opponent files evidence first, the applicant responds and the opponent can reply. Each evidence round can last 2 months; extensions may be available. Once all the evidence has been filed, the opposition is decided either at a hearing, or purely based on the papers filed including any submissions (as distinct from evidence) that the parties might submit instead of arguing the case verbally at a hearing. An award of costs is usually made in favour of the winning side. This is based on an official scale, intended as a contribution to, rather than compensation for, actual costs. There is some flexibility.

There is the possibility of an appeal within 28 days. This can be to the courts or the “Appointed Person”, usually a senior barrister or academic. A decision of the Appointed Person is final; court proceedings can be appealed.

*Please refer to the notes about ‘Fast Track’ opposition procedure elsewhere in this page.
** For example, a trade mark published for opposition purposes on 24 January 2013 will have a deadline of 24 March 2013

Who can oppose?

1. Absolute grounds: anyone
2. Earlier rights: the owner only, not even a licensee of earlier rights can oppose. (Once the opposition is filed, a licensee can in effect take over the opposition as an “intervenor.”)

How long will it take?

An opposition which goes no further than the preliminary indication, can be over in around 7 months. A case which uses the full cooling off periods, and in which evidence is filed, with the opposition being decided after a hearing, can typically take two or three years. There is then also the possibility of appeal, which will further extend proceedings.

Possible grounds of opposition

1. Absolute grounds

Trade mark application made in bad faith or a mark that is inherently unregistrable because it is:

  • descriptive, i.e. describes the goods/services;
  • deceptive, i.e. it gives a false impression as to the type or quality of the goods or services;
  • generic, i.e. a general expression used in the particular trade or business;
  • contrary to public policy or to accepted principles of morality;
  • a specifically protected emblem.

In certain circumstances, if substantial use has been made of the mark, so that it has become distinctive of the applicant’s goods or services, then an opposition on absolute grounds may possibly be defeated.

2. Relative grounds i.e. earlier rights, for example:

  • Identity or likelihood of confusion with earlier trade mark applications/registrations;
  • Taking unfair advantage of, or being detrimental to, the distinctive character or the reputation of an earlier trade mark application/registration. (If the earlier mark is well known, the rights given by the registration will be broader than for a mark that is not well known or which does not have a reputation);
  • conflict with rights built up through use of an earlier mark (unregistered/passing off rights);
  • conflict with designs/copyright.

How does the opponent, or potential opponent, become aware of an application?

  1. By having a commercial watching search in place to detect the publication of potentially conflicting applications. Please refer to our information sheet on watching searches for more details.
  2. Through a notification from the IPO of the publication of the later application, if the examiner considers it might be confused with an earlier UK registration or pending application belonging to the (potential) opponent.
  3. By contact e.g. if applicant has approached the (potential) opponent for consent to use and/or register the mark.

Importance of use of opponent’s registrations over 5 years old

If the opposition is based on marks registered (protected in the case of designations of International Registrations) for 5 years or more, as at the publication date of the application being opposed, a statement of use must be given. If the applicant does not accept the statement of use, the opponent will need to prove, in the evidence stage of the opposition, that during the 5 years preceding the date of publication of the opposed mark, there has been genuine use of the registered mark or protected designation in the United Kingdom, or in at least one member state of the European Union in the case of a European Union Trade Mark1, in connection with the goods or services for which it is registered.

The opponent’s evidence must demonstrate that the mark has been used in relation to the goods/services relied upon for the opposition by presenting:

  • Data about the volume of sales of the goods/services during the relevant 5 year period;
  • Examples of the mark in use in relation to the goods/services for which use is claimed, for example copies of sales invoices or advertisements/brochures etc.
  • Details about the period of time during which the trade mark has been used and the geographical area that the use covered;
  • Information about how the mark is used, for example on labels, signs, invoices, advertising materials etc.

A registration or designation subject to the use requirements will only remain a valid ground of opposition, to the extent that use of it has been shown. This could be for a much narrower range of products/services than those covered by the registration. Alternatively, if there is no evidence of use at all, the registration or designation is no longer a valid basis for the opposition. In such circumstances, if there are no other valid registrations or designations, the opposition would not proceed any further.

There is an exception if there are justifiable reasons for non-use, but this is extremely rare. Examples might be a trade embargo affecting the whole business sector, or a pharmaceutical awaiting regulators approval. However, justifiable reasons for non-use are very difficult to assert in practice.

If it is apparent that use of a registration cannot be proved, or not proved satisfactorily, the other side might commence a non-use cancellation action against the registration concerned.

1 previously known as Community Trade Mark (CTM)

UK Fast Track Opposition Procedure

The Fast Track procedure differs from the standard opposition procedure in a number of ways:

  • Grounds are limited to identity or likelihood of confusion with a maximum of three earlier rights, which must be earlier registered trade marks (or protected designations of International registrations) only and not pending applications;
  • The opponent must submit proof of use with the notice of opposition if the action is based on marks registered for 5 years or more;
  • Either party must obtain permission to file any further evidence in proceedings;
  • The decision will normally be based on the papers filed including final written submissions.

The 2 month period for the applicant to file its defence remains the same, as does the availability of a “cooling off period” for negotiations if both parties agree. If the opposition is defended (and the “cooling off period” either ends without settlement or is not utilised), then the case will be ready for a decision unless either party requests permission to file evidence. If the IPO grants permission to file evidence, then an evidential timetable will be set. The ability to file further evidence, or a decision after a hearing, will only be granted in exceptional cases as adjudged by the IPO. In certain circumstances, the IPO may convert a Fast Track opposition into a normal opposition.

Download Potential Opposition Against UK TM Application

This information is simplified and must not be taken as a definitive statement of the law or practice.

Topics: Trade Marks - General , Trade Marks - UK , IP Protection , Dispute Resolution

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