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Receiving a Notice of Opposition from the UK Intellectual Property Office (UKIPO) can be a worrying experience, particularly after investing time, money and effort into developing your brand. However, an opposition does not necessarily mean your trade mark application will fail. Many oppositions are successfully defended, resolved through negotiation, or overcome by making carefully considered amendments to the specification of goods and services.
Understanding how the opposition process works and taking early strategic advice can significantly improve your prospects of securing registration.
What is a Trade Mark Opposition?
Once a UK trade mark application has been examined and accepted by the UKIPO, it is published in the Trade Marks Journal. This publication opens a two-month period during which third parties may oppose the registration if they believe it conflicts with their existing rights.
The opposition period may be extended by a further month if a third party files a Notice of Threatened Opposition (Form TM7A) within the initial two-month period.
Opposition proceedings provide an efficient and cost-effective way for trade mark owners to challenge potentially conflicting applications without immediately resorting to court proceedings.
Why Are Trade Marks Opposed?
The most common grounds for opposition include:
- The applied-for mark is identical or similar to an earlier registered trade mark.
- The goods and/or services are identical or similar.
- There is a likelihood of consumer confusion.
- The earlier trade mark has a reputation and the new application would take unfair advantage of, or be detrimental to, that reputation.
- The application has been made in bad faith.
- The applicant is not entitled to register the mark because another party has earlier unregistered rights capable of supporting a passing off claim.
Not every opposition is well-founded. Some are filed as a precautionary measure, while others are intended to encourage commercial discussions before registration.
Receiving the Notice of Opposition
If an opposition is filed, the UKIPO will serve the applicant with:
- The Notice of Opposition (Form TM7);
- The Statement of Grounds; and
- Details of the deadline for filing a defence.
At this stage, it is important to review the opponent’s arguments carefully and obtain specialist advice as soon as possible. Missing procedural deadlines can have serious consequences.
Filing Your Defence
If you wish to defend your application, you must file a Counterstatement (Form TM8) within two months of receiving the Notice of Opposition.
The TM8 confirms that you intend to defend your application and respond to the allegations made by the opponent.
If no TM8 is filed within the prescribed period, the application will generally be treated as abandoned, allowing the opposition to succeed automatically.
The Cooling-Off Period
Many opposition proceedings enter into a cooling-off period, allowing the parties to negotiate a commercial resolution without incurring the costs of contested proceedings.
Where both parties agree, the cooling-off period can last for up to nine months.
This period often provides an opportunity to discuss:
- Coexistence agreements.
- Amendments to the specification of goods or services.
- Restrictions on the scope of use.
- Licensing arrangements.
- Withdrawal of the opposition.
In many cases, sensible commercial negotiations can achieve a better outcome than prolonged litigation.
Assessing the Strength of the Opposition
Before deciding how to respond, it is important to assess the merits of the opponent’s case.
This typically involves considering:
- The strength of the earlier trade mark rights.
- The similarity between the respective marks.
- The similarity of the goods and services.
- The distinctiveness of the earlier mark.
- The characteristics of the relevant consumers.
- Whether there is a genuine likelihood of confusion.
- Whether any claims of reputation or bad faith are properly supported.
Every opposition is unique, and a detailed legal assessment is essential before deciding upon the most effective strategy.
Can You Require Proof of Use?
One of the most effective defensive tools available in many opposition proceedings is requiring the opponent to prove genuine use of its earlier trade mark.
Where the earlier registration has been registered for more than five years, the opponent may need to demonstrate genuine commercial use during the relevant statutory period.
Evidence commonly relied upon includes:
- Sales invoices.
- Marketing materials.
- Product catalogues.
- Website evidence.
- Advertising campaigns.
- Packaging.
- Sales figures.
- Witness statements.
If the opponent cannot establish genuine use, its earlier registration may carry little or no weight for the purposes of the opposition.
The Evidence Stage
Following the filing of the pleadings, the UKIPO will issue directions setting out the evidence timetable.
Typically:
- The opponent files evidence first.
- The applicant then files evidence in response.
- The opponent may have a limited opportunity to submit evidence strictly in reply.
Evidence may include witness statements, supporting documentation, examples of marketplace use, and material demonstrating how consumers encounter the respective brands.
Written Submissions or an Oral Hearing
Once the evidence stage has concluded, both parties may either:
- Request an oral hearing before a UKIPO Hearing Officer; or
- Ask the Hearing Officer to determine the matter based upon the written evidence and submissions.
For more complex disputes, an oral hearing can provide an important opportunity to address legal issues directly and answer questions raised by the Hearing Officer.
The UKIPO’s Decision
After considering the evidence and legal submissions, the Hearing Officer will issue a written decision.
The decision will usually address:
- Similarity of the marks.
- Similarity of the goods and services.
- Distinctiveness of the earlier trade mark.
- Likelihood of confusion.
- Reputation.
- Bad faith (where alleged).
- Passing off (where relied upon).
- Costs.
Although costs are often awarded, they generally represent only a contribution towards the successful party’s legal expenses.
Appeals
If either party is dissatisfied with the decision, there may be a right of appeal.
Appeals may be brought before:
- The Appointed Person; or
- The High Court.
Strict procedural deadlines apply, making early advice essential.
Practical Tips for Successfully Defending an Opposition
A successful defence often involves more than simply responding to the allegations. A carefully planned strategy can significantly improve the prospects of success.
Key considerations include:
- Reviewing whether proof of use can be requested.
- Considering whether limited amendments to the specification could resolve the dispute.
- Assessing the commercial benefits of settlement.
- Preserving evidence of intended or actual use.
- Meeting every UKIPO deadline.
- Obtaining specialist trade mark advice at an early stage.
In many cases, relatively small changes to the application can allow registration to proceed while avoiding lengthy and costly proceedings.
Why Specialist Advice Matters
Trade mark opposition proceedings involve detailed legal analysis and strict procedural requirements. Successfully defending an opposition requires a thorough understanding of trade mark law, UKIPO practice and the relevant case law.
Early strategic advice can help identify weaknesses in the opponent’s case, develop effective legal arguments, prepare persuasive evidence and maximise the chances of achieving a successful outcome.
How The Trademarkroom Can Help
At The Trademarkroom, trade marks are our sole focus. Our dedicated team advises businesses, entrepreneurs and brand owners across the UK and internationally on every aspect of trade mark protection, from clearance searches and applications through to oppositions, invalidity actions, revocations and infringement disputes.
If your UK trade mark application has been opposed, we can assess the strength of the opposition, advise on the most commercially effective strategy, prepare your defence, negotiate settlements where appropriate and represent you throughout the UKIPO proceedings.
Protecting your brand starts with the right advice. If you’ve received a Notice of Opposition, contact The Trademarkroom today to discuss how we can help defend your application and safeguard your valuable intellectual property.
