How to oppose a UK Trade Mark application?

Once an application for registration of a trade mark has been examined and accepted by the Registry, it is published in the Trade Marks Journal. Publication opens a two-month period, allowing owners of earlier trade marks the opportunity to challenge an application if they believe it conflicts with their rights. This period can, in some cases, be extended to three months.

Grounds for opposition

The Trade Marks Act 1994 sets out the relevant grounds for refusal of registration.

• Section 3

This section relates to an absolute ground for refusal of registration. That is, in other words, something about the mark itself that prevents it from being registered. For example, trade marks that are devoid of any distinctive character shall not be registered.

• Section 5

This section relates to relative grounds for refusal of registration. That is where the nature of the trade mark would cause an infringement of another person’s existing marks or rights. For example, if a trade mark is identical to an earlier trade mark and the goods or services applied for are also the same, the trade mark shall not be registered. Oppositions based on Section 5 can only be brought by the owner of the earlier mark.

An opposition lodged against any of the above should file a Notice of Opposition on a TM7 within the period allowed. A TM7 is a legal document used to file oppositions against published trade mark applications.

Opposition Process

1. Notice of Opposition
2. Any party wishing to oppose a published mark has two months immediately after the date of publication to indicate their intention to oppose on either a TM7A or a TM7.
3. This is as per Rule 17 of the Trade Marks Rules 2008

• TM7A
• A TM7A can be filed, which is an optional Notice of Threatened Opposition.
• This must be filed within the initial 2-month opposition period.
• This automatically extends the deadline to oppose by 1 month (to a total of three months).

• TM7
• A TM7 is then filed which sets out the legal grounds of the opposition.

• Serving the notice
• The trade mark applicant then receives the TM7 and these dates are known as the “notification date”.

• Filing a defence (TM8)
• The applicant then has two months from the “notification date” to file a TM8.
• A TM8 is a notice of defence.
• This would include a counterstatement, and potentially, a requirement of proof of use.

Failure to file defence

• As per Rule 18 of the Trade Marks Rules 2008, if there is a failure to file a defence, in cases where all the goods and/or services have been opposed, the entire application will be abandoned.
• However, if only some parts were opposed, those will be abandoned but the rest of the application will proceed to registration.

• Evidence
• The Tribunal specifies the periods for each of the parties to file evidence.
• They have full discretion over when this happens.
• If the opponent does not file evidence in a case where their grounds are dependent on said evidence, they will be deemed to have withdrawn the opposition.

Other Procedural Mechanisms

Cooling off period

• In line with Rule 18, the parties can, if agreed by both, request to extend the period for filing the counterstatement.
• This will give them an extra nine months from the “notification date” to potentially negotiate a settlement.
• This can be further extended to a maximum of eighteen months.
• However, if an agreement cannot be reached and the applicant wants to continue with the application, they must file an TM8 (notice of defence) before the end of the cooling off period.
• These periods of negotiations can be terminated by both the opponent and applicant.

Preliminary Indication (PI)

• This is based off Rule 19 of the Trade Marks Rules 2008.
• It states that the Registrar has the power to issue a Preliminary Indication.
• Its purpose is to provide the parties with an indication as to the likely decision in respect to the grounds of opposition.
• If the PI is accepted by the parties, there would be two scenarios:
• If it suggested that the opponent would have succeeded, the application would be refused
• If it suggested that the applicant would have been successful, the entire application would proceed to registration.
• If not accepted by either party, they can proceed to the evidence rounds.

Proof of use

• If the earlier registered trade mark is more than five years old, the applicant can require the opponent to prove that it has been used during the five years before the publication date.
• When the applicant files their TM8, they must either accept or require proof of the opponent’s statement of use.
• No acceptance by the applicant will require the opponent to file evidence for the use of their trade mark.

Fast Track Opposition

• If someone is opposing a trade mark application, they have the option to use Fast Track.
• It is designed to resolve straightforward disputes more quickly than the standard procedure.
• The main differences are that it limits the grounds of opposition to Section 5 only and an opponent can rely on no more than three earlier trade marks.
• Most of these cases are also decided on the written evidence without an oral hearing.

Conclusion

Opposing a UK trade mark is a legal process designed to protect existing trade mark rights before another is registered. It is important to understand the grounds for opposition, the deadlines and the procedural steps, as failing to comply with them can result in an opposition being lost. Seeking legal advice early, whether using the standard or Fast Track procedure, can help ensure that your rights are protected.