What is trade mark opposition?
In the field of intellectual property (IP), trademarks are of vital importance. It distinguishes the goods and services of one business from another. It is the backbone of your brand identity.
The most frequent grounds for opposing a trade mark are:
- the new trademark is likely to confuse the public with your existing identical or similar trade mark;
- your existing trademark is well known;
- the applicant for the new trade mark is acting in bad faith; and
- the new trade mark is descriptive and/or lacks distinctiveness.
When you apply to register your trade mark in UK Intellectual Property Office (UKIPO), sometimes, you may face an opposition from an earlier trade mark owner. This is when the trade mark opposition procedure can become one potential obstacle to register a trade mark in the UK.
The opposition process for trade marks in the UK allows third parties to contest the registration of a trademark applied for at the UK Intellectual Property Office (UK IPPO). 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 trademark 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, with the option for the office to extend the two-month period by one month if needed by filing form (TM7A).
Grounds of opposition
- Absolute grounds
Absolute grounds as defined by Section 3 of the Trademarks Act of 1994 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. (Descriptiveness is at least as important a reason for declining to issue a mark, as opposed to a generic term, which is equally non-distinctive.)
- Relative grounds
Relative grounds we usually mean relative grounds for refusal, as set out under Section 5 of the Trademarks Act 1994. These constitute a basis on which to refuse a trade mark application. They concern the applicant’s trade mark and its potential conflict with an earlier trademark or earlier right owned by someone else.
What is the cost to oppose a trade mark application?
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.
- If you are only opposing the mark under sections 5(1) and/or 5(2) of the Act, the fee is £100.
- If you are opposing under other grounds, the fee is £200.
- If you are opposing under both 5(1) and/or 5(2) and one or more other grounds, the fee is again £200.
Notice of opposition
The Trademarks Act 1994 and the rules issued by the UK Intellectual Property Office (UKIPO) mainly govern the procedure for filing a Notice of Opposition. The Notice of Opposition must clearly and concisely state the grounds for the opposition.
This must be done within two months from when this starts from the date of publication of the trade mark application. The opposing party must use Form TM5 to file the notice of opposition, which will cost £100. This form asks for the essential information needed to understand what the basis of the opposition is and to describe the opposing party’s earlier trade mark right clearly.
After an opposition is lodged, the IPO sends notification to the applicant. The applicant then is given the opportunity to file a counterstatement. The counterstatement must be filed within two months of the receipt of the notice of opposition. The IPO informs both parties that they may submit evidence and arguments in support of their cases.
If both parties consent, the deadline can be extended by 7 months as a “cooling-off period”— a time for negotiation. If both parties agree, it extends for 9 more months. 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 application will not be granted; if the opposing party loses, the application will be granted.
Win/Loose-Appeal
The trade mark opposition process has a lot of bearings on businesses. Winning an opposition can stop a competitor from getting a trade mark that would mix up with an existing brand or confuse ordinary consumers. But losing an opposition also has significant ramifications. It can lead to more competition in the market and a loss of market share for the party that lost the opposition.
If either party is unhappy with the decision, they can appeal it to the Intellectual Property Enterprise Court (IPEC). Either party can appeal the outcome of the opposition process. The appeal must happen within 21 days of the tribunal’s decision.
To appeal to the Appointed Person, one must file a TM55P, which is officially called the “Notice of Appeal to the Appointed Person.” The fee is for that £250.
3 outcomes when an opposition concludes
- 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 may be awarded costs for successful oppositions and for successful defences against oppositions. Awards of costs to the winning side are usually far below the amounts actually spent. Costs awarded to the successful party are often called “contributory costs.” If the losing side in an opposition has behaved badly, the winning side can ask for more than the amount awarded at off-scale costs.
