What is trade mark opposition?
In the field of intellectual property (IP), trade marks are of vital importance. A trade mark distinguishes the goods and services of one business from another, acting as the backbone of brand identity.
When opposing a trade mark, the most common grounds include:
- The new trade mark is likely to confuse the general public with the existing identical or similar trade mark
- The existing trade mark is well-known
- The applicant for the new trade mark is acting in bad faith
- The new trade mark is descriptive and/or lacks distinctiveness
When you apply to register your trade mark with the UK Intellectual Property Office (UKIPO), you may face a trade mark opposition from the owner of an earlier mark. This is when the trade mark opposition procedure can become a potential obstacle to successfully registering your trade mark.
If you’re still in the early stages of brand protection, it’s worth reviewing the key requirements for registering a UK trade mark to avoid issues later in the process.
The trade mark opposition process in the UK
The UK trade mark opposition process allows third parties to challenge the registration of a trade mark applied for at the UK Intellectual Property Office (UKIPO).
It is an essential step that must be taken by existing trade mark owners to protect their rights and ensure that no new trade mark will cause confusion or infringe upon their established brand.
Once a trade mark application is published in the Trade Marks Journal, anyone with an interest can file an opposition.
Opposition to trade mark applications can only occur during the publication phase of the application. The trade mark office publishes the application for a 2-month period before it is registered, which can be extended by one month if needed by filing form TM7A.
Grounds for opposing a trade mark
- Absolute grounds
As defined by Section 3 of the Trade Marks Act of 1994, absolute grounds deal with imperfections in the mark itself.
The most common reason given for opposing a mark on absolute grounds is that the mark is descriptive of the goods and/or services for which registration is sought.
Descriptive or generic terms often lack the distinctiveness required for registration.
- Relative grounds
Relative grounds for refusal—defined in Section 5 of the Act—focus on conflicts with earlier trade marks. These grounds are typically used when the new application could infringe on an existing trade mark due to similarities or prior rights.
If you believe a new application is infringing on your rights, or if you’re unsure how strong your case is, our guide on Trade Mark Infringement: What You Need To Know can help clarify your legal position.
How much does it cost to oppose a trade mark?
To oppose the registration of a trade mark, one must file a TM7 form to give the applicant “notice of opposition” and “state the grounds” on which you are opposing. The fees are:
- £100 if you are only opposing the mark under sections 5(1) and/or 5(2) of the Act
- £200 if you are opposing under other grounds
- £200 if you are using a combination of 5(1)/5(2) and other grounds
Filing a notice of opposition
The opposition procedure, governed by the Trade Marks Act 1994 and UKIPO rules, begins with filing a Notice of Opposition.
The Notice of Opposition must clearly explain the reasons for opposing the trade mark. It must be filed within two months from the date the trade mark application is published. To do this, the opposing party must use the Form TM5, which costs £100.
The TM5 form asks for essential information needed to understand the basis of the opposition and a clear explanation of the opposing party’s earlier trade mark rights.
Once the opposition is filed, the IPO notifies the applicant. The applicant then has two months to respond by filing a counter-statement. The IPO will let both parties know that they can submit evidence and arguments to support their case.
Cooling-off period and hearing
If both sides agree, the opposition process can enter a cooling-off period for negotiation. This period is initially seven months, though this can be extended for nine more months with mutual consent. Either party can end it at any time.
If the two parties cannot resolve their opposition through negotiation (where it usually makes sense to explore in detail any differences of opinion), a hearing will be scheduled at which a decision will be made. The decision-maker will be a hearing officer appointed by the IPO.
The IPO officer will decide on the evidence and arguments presented by both parties. If the opposing party wins, the trade mark application will not be granted; if the opposing party loses, the application will be granted.
Outcome of trade mark opposition
Once a trade mark opposition concludes, three outcomes are possible:
- Full Success: The opposition succeeds completely; the trade mark and the goods and/or services it covers are refused on all counts
- Partial Success: Some of the goods and/or services covered by the trade mark are refused registration
- No Success: The opposed trade mark remains on the register and continues to cover the contested goods and/or services
Parties can be awarded costs if they win an opposition or successfully defend against one. However, the amount given is usually far less than what was actually spent. These awards are often called “contributory costs.” If the losing side behaved badly during the opposition, the winning side can ask for a higher amount, known as off-scale costs.
Opposition appeal process
The trade mark opposition process can have a big impact on businesses. Winning an opposition can stop a competitor from getting a trade mark that might confuse consumers or clash with an existing brand.
But losing an opposition also has significant ramifications—it can lead to more competition and a possible loss of market share for the losing party.
If either side disagrees with the decision, they can appeal to the Intellectual Property Enterprise Court (IPEC). Appeals must be made within 21 days of the tribunal’s decision.
To appeal to the Appointed Person, the party must file a TM55P form, officially called the “Notice of Appeal to the Appointed Person.” The fee for this appeal is £250.
Trade mark opposition solicitors in UK
The trade mark opposition process plays a critical role in protecting your brand identity. For businesses expanding beyond the UK, it’s equally important to think ahead and secure international trade mark protection before someone else registers your brand overseas.
Whether you are opposing a trade mark that poses a risk to your business or responding to an opposition filed against your application, it’s important to understand the rules, deadlines, and potential outcomes involved. From the types of opposition grounds to filing requirements and appeal options, every step can influence the future of your trade mark.
Freeman Harris Solicitors is here to help you protect what matters most—your brand. Get in touch with us today for clear, expert advice on trade mark opposition and registration.
