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, trademark oppositions.
After your application for a trademark with the UK Intellectual Property Office has successfully passed examination, it will be published in the Trademarks Journal. This gives other brands and individuals the opportunity to challenge your trademark application. During this time, the success of your trademark 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 trademark 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 trademark registration. Perhaps a brand’s slogan is too generic; maybe a competitor brand is attempting to register a trademark on a logo that is too similar to your own.
Whether you’re seeking to oppose a trademark 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.
Grounds of opposition
When a trademark 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. Despite GoCompare’s opposition on absolute grounds, the ruling recognized the phrase’s distinctive character from relentless marketing, qualifying it for registration.
Relative grounds are reserved for specific conflicts that brands or individuals have with a particular trademark, usually in relation to their own brand or intellectual property. For example, an organisation might file an opposition if the trademark you are registering is confusingly similar to a trade mark they have held for a certain period of time.
Anyone can file an opposition based on absolute grounds, but only the owner of prior relative rights can oppose a trademark in the UK based on relative grounds.
How long is the opposition period?
In the UK, the trademark opposition period lasts two months from the date of publication in the Trademark Journal. However, a potential opponent can extend this period by an additional month by submitting a Notice of Threatened Opposition. This extension allows both parties to negotiate and seek a settlement before formal opposition proceedings begin.
Both the opponent and the applicant can choose to enter a ‘cooling off period’ to resolve the dispute. This request must be made within the two-month timeframe, allowing the applicant to file a defence. During this period, they have nine months to settle the matter amicably. Both parties can agree to extend this period by an additional nine months if necessary.
What can I do if someone files an opposition to my trademark?
If you don’t enter into a cooling off period, you’ll have two months to file a formal Notice of Defence and counter statement. The notice itself needs not supply evidence but rather your denial of the notice of opposition.
Upon receipt of your Notice of Defence, the UK IPO will inform you of the deadline for submitting evidence and submissions to the opponent. Evidence typically includes a witness statement detailing the case’s facts based on the witness’s personal knowledge.
When facing opposition based on relative grounds, opponents must furnish evidence demonstrating their mark’s usage. The decision often hinges on longevity and market awareness. Hence, it’s crucial for opponents to provide evidence of genuine use during the 5 years preceding the mark’s application publication.
After submitting evidence and arguments to the UK IPO, both the opponent and the applicant can provide final submissions. They can request a hearing, yet the other party can choose a written submission over attending the oral hearing.
How are trademark oppositions decided?
The UK IPO decides on trademark opposition by evaluating evidence and application circumstances. If based on absolute grounds, it assesses the applicant’s trademark history, market position, and impact on other traders.
When opposition is based on relative grounds, evaluators assess evidence from both parties to determine their connection to the proposed trademark and its impact on the opponent. Evidence may comprise invoices, marketing materials, labels, and signs demonstrating sincere use over five years or more.
A decision is usually rendered within six to eight weeks after the hearing or the conclusion of proceedings. If the opposition reaches a final decision, the process at the UK IPO will span 8-12 months before reaching a resolution.
Can I appeal a decision on a trademark opposition?
In short, yes. To appeal the opposition decision, an Appointed Person, an experienced trademark practitioner, will hear the appeal and render a decision. To appeal to the Appointed Person, submit a TM55P form detailing grounds for appeal and relevant legal authorities. Appointed Person decisions are final, but you can appeal to the High Court and, if needed, to the Court of Appeal.
If you face a trademark opposition or plan to oppose one, it’s crucial to seek guidance from a skilled lawyer. They can assist you in safeguarding your interests throughout the process.