Looking to protect those unique elements of your brand that set you aside from the competition? It’s a good idea to get clued up on the process of trademark registration and the potential pitfalls along the way. Notably, trade mark oppositions.
After your application for a trade mark with the UK Intellectual Property Office has successfully passed examination, it will be published in the Trade Marks Journal. This gives other brands and individuals the opportunity to challenge your trade mark application. During this time, the success of your trade mark hangs in the balance. With any luck, your application will be free of oppositions – of course, that’s not always the case. Whether for reasons relating to their own trade mark or concern over distinctiveness of your chosen mark, a potential opponent may take issue with your application.
Similarly, there may be reasons you wish to oppose a trade mark registration. Perhaps a brand’s slogan is too generic; maybe a competitor brand is attempting to register a trade mark on a logo that is too similar to your own.
Whether you’re seeking to oppose a trade mark or you’re on the receiving end of an opposition, the following summary explains the procedures in the UK and the options for defending an opposition.
When a trade mark is opposed, it is done so on the basis of absolute grounds or on the basis of relative grounds.
Absolute grounds are concerned with how distinctive the mark is and whether it should be free for all traders to use. An example of this is the phrase ‘compare the market’, which the company comparethemarket had trademarked in 2014. Although GoCompare filed an opposition on absolute grounds, the ruling found that the phrase had, through relentless marketing, developed a distinctive character in the public consciousness and thus qualified for registration.
Relative grounds are reserved for specific conflicts that brands or individuals have with a particular trade mark, usually in relation to their own brand or intellectual property. For example, an organisation might file an opposition if the trade mark you are registering is confusingly similar to a trade mark they have held for a certain period of time.
t’s worth noting that anyone is permitted to file an opposition based on absolute grounds, but only the owner of prior relative rights can file a trade mark opposition in the UK based on relative grounds.
In the UK, the trade mark opposition period is two months from the date that the mark is published in the Trade Mark Journal. However, a potential opponent can request to have the opposition period extended by a further month from publication by filing a Notice of Threatened Opposition. The purpose of extension is to give both parties the chance to negotiate and find an amicable settlement before a formal opposition is filed.
Both the opponent and the applicant can also agree to enter into a so-called ‘cooling off period’ which allows them the time to reach a favourable resolution to the dispute. A request for a cooling off period must be filed within the two-month timeframe to allow for the applicant to file a defence. If they agree to the cooling off period, they will have nine months to settle matters amicably – however, they may extend this period by a further nine months if both parties deem it necessary.
If you don’t enter into a cooling off period, you’ll have two months to file a formal Notice of Defence and counterstatement. The notice itself needs not supply evidence but rather your denial of the notice of opposition.
Once the UK IPO has received your Notice of Defence, they will let you know the precise timeframe that you and the opponent will have to file supporting evidence and submissions. Evidence can come in many forms but usually consists of a witness statement that specifies the facts of the case based on the witness’ own personal knowledge.
If the opponent has filed an opposition based on relative grounds (e.g., your mark is too similar to their own), they will be required to provide evidence that proves the use of this mark. The decision in this case can often come down to longevity and market awareness, so it is vital from the opponent’s perspective to show through evidence that the mark has been genuinely put to use during the 5 years leading up to the date when the application for the mark was published.
Once all evidence and submissions have been filed with the UK IPO, the opponent and the applicant will be invited to file final submissions in support of their position. The parties also have the option of requesting a hearing, but it’s worth stating that the other party can still choose to file a written submission rather than partaking in the oral hearing.
A decision on a trade mark opposition will be made by assessing the evidence provided, the unique circumstances surrounding the application. If the opposition is made on absolute grounds, the UK IPO will look to the applicant’s history with the proposed trade mark along with their position in the market and the potential consequences that registering the trade mark could have on other traders.
If the opposition has been filed on relative grounds, evidence from both the opposition and the applicant will be assessed to determine the relationship that either party has with the proposed trade mark and the extent as to which the successful registration of the trade mark would affect the opponent. Evidence here could include examples of invoices, marketing materials, labels and signs that show the mark being used sincerely over a period of five years or more.
A decision will typically be issued around six to eight weeks from the hearing or from the close of proceedings respectively. If the opposition proceeds to a final decision, the proceedings before the UK IPO will take between 8-12 months for a decision to be reached.
In short, yes. If you wish to appeal the opposition decision, the first step will be for an Appointed Person (an experienced trade mark practitioner) to hear the appeal and make a decision. An appeal to the Appointed Person is made by filing a TM55P ‘Notice of appeal to the Appointed Person’, which must include the grounds of the appeal together with any relevant trade mark law and legal authorities relied upon in support of each of the grounds of appeal. The decision reached by an Appointed Person cannot be appealed – however, you may be able to make your appeal to the High Court, where decisions can be appealed to the Court of Appeal.
Whether you’ve had an opposition filed against a trade mark application or you wish to file an opposition on a proposed trade mark, we strongly recommend seeking specialist advice from an experienced lawyer who can help you navigate through the process and protect your interests at every step.
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