Oppose a trade mark in the UK: Process and considerations

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When a trade mark application is published by the UK Intellectual Property Office (IPO), it marks a critical moment for businesses and individuals looking to protect their intellectual property.

If a trade mark conflicts with your own rights or fails to meet the IPO’s stringent registrability criteria, opposing its registration may be a necessary step to protect your business interests.

But what does this process involve, and what should you consider before taking action?

In this article, we’ll guide you through the trade mark opposition process in the UK and outline key considerations to help you protect your brand effectively.

When can you oppose a trade mark?

After a trade mark application is accepted by the IPO, it's published in the online trade marks journal.

This publication opens a two-month opposition period, during which objections can be raised. If a Notice of Threatened Opposition is filed, this period is extended to three months giving you time to prepare your grounds for opposition.

Opposition is your opportunity to formally challenge a trade mark before it becomes registered.

Grounds for opposing a trade mark

Trade marks can be opposed on two main grounds:

Absolute Grounds

These relate to the inherent qualities of the trade mark itself. Common issues include:

• Generic or descriptive nature: The trade mark describes the goods or services and cannot distinguish them from others.
• Non-distinctiveness: The mark lacks uniqueness and should remain free for others in the industry to use.
• Functional features: For example, if the trade mark relates to a shape that serves a technical purpose.

You will need a specialist to review this to discern whether, from a legal point of view, these grounds are met or not. 

Relative grounds

These focus on conflicts with earlier rights, such as:

• A trade mark that is identical or similar to your own, creating a risk of confusion.
• Unregistered (common law) rights, such as passing off.

It’s important to note that while anyone can oppose on absolute grounds, only the owner of prior rights can oppose on relative grounds.

Again, it is important for you to consult a trade mark specialist to make sure that any claim you make is precise and valid.

The Opposition Process

Step 1: Filing a Notice of Threatened Opposition

A Notice of Threatened Opposition serves as a formal warning to the applicant, giving you more time to prepare your case while extending the opposition period by one month.

This can also open the door to negotiations without immediately initiating costly proceedings.

Step 2: Submitting an opposition

To formally oppose a trade mark, you must file an opposition with the IPO, providing clear grounds for your objection.

Depending on your circumstances, you can use:

• Fast track opposition: These offer a quicker resolution but are more expensive upfront. If it is a correct assertion of rights, it should result in a lower cost than standard opposition claims overall  (which would tend to go on for longer). This type of opposition is typically best utilised for simpler cases.
• Standard opposition proceedings: More comprehensive, used for complex cases or when additional evidence is needed.

Step 3: Negotiations or tribunal decision

Before the matter escalates, the IPO may impose a "cooling-off period" to encourage settlement. If no resolution is reached, the IPO Tribunal will decide the case based on the evidence presented.

Key Considerations When Opposing a Trade Mark

1. Strength of your case
   Before opposing, assess whether your grounds are robust. For relative grounds, ensure your trade mark rights are enforceable and there is a clear conflict. For absolute grounds, provide evidence demonstrating why the trade mark fails the IPO’s criteria.
2. Costs and timescales
   Opposition proceedings can be costly, especially if the matter proceeds to a hearing. Fast track cases tend to be more affordable overall (as they tend to resolve quicker) but are not suitable for all disputes.
3. Negotiation opportunities
   Engaging with the trade mark applicant directly can often lead to an amicable solution, such as:
   1. Coexistence agreements: Defining boundaries for how each party can use their trade marks.
   2. Limitations or disclaimers: Adjusting the scope of the trade mark application to avoid conflict.
4. Professional advice
   Given the legal complexities, it’s wise to consult an experienced trade mark attorney. Their expertise can help ensure your opposition is well-prepared and avoids unnecessary costs or delays.

Why opposing a trade mark matters

A trade mark is a powerful asset that defines your brand’s identity and reputation.

Allowing conflicting or invalid trade marks to proceed to registration can dilute your rights, confuse your customers, and damage your business.

We tend to see this as the slow erosion of a brand, leading to a later collapse - where suddenly a brand is no longer distinct or meaningful in the marketplace.

For a business, this can cause serious impact, and is much harder to remedy than simply enforcing the brand as you go along.

Taking prompt and decisive action ensures that your intellectual property and business interests remain protected.

Oppose a trade mark: Additional considerations

Additional considerations that go into a trade mark opposition include:

Costs of opposition

Be sure to factor in the costs of opposition as an ongoing concern. When it comes to protecting your psychological borders (which is to say the unique appeal of your brand to the customer/client) this is an important ongoing investment.

However, the gravity and appeal of the brand, and how this impacts your business' success is a consequence of doing this properly.

As such, it is a good idea for your legal team to allocate an appropriate legal fund to enforce your brand, whether in trade mark oppositions or otherwise.

Evidence requirements

You will need also need to consider the evidence requirements for enforcing trade mark oppositions. This will include things like:

• Examples of prior use.
• Evidence that proves there's been customer/client confusion.
• Documentation of your existing rights.

Working closely with experienced trade mark specialists will help make this process as seamless as possible.

Consequences of losing an opposition

Most crucially, losing a trade mark opposition - due to either failing to oppose, or the opposition being unsuccessful - can have a meaningful commercial impact on your brand (and business).

On top of that, you may be liable for the other party's costs in defending the opposition - and if the opposition is high profile, there may also be a reputational impact.

Alternative dispute resolution (ADR)

Due to the relatively high stakes involved in a trade mark opposition - you may wish to consider other ways of resolving the dispute.

Again, it's recommended that you speak to a trade mark specialist to ascertain the best course of action, and how to best secure your commercial interests.

These alternative solutions can include: mediation, negotiation, settlement, and licensing of the brand, amongst other solutions - avoiding an outright dispute.

Strategic considerations before opposing

As with all forms of legal action, it is important to take a considered and careful approach before taking any definitive action.

You'll need to have a clear and precise assessment of whether your existing rights are strong enough to justify an opposition.

There have been examples of businesses looking to oppose a trade mark who, in the process of doing so, have revealed weaknesses in the protection of their brands.

This, in certain scenarios, can lead to the invalidation of the trade mark rights you were looking to enforce in the first instance. As such, it's important to speak to experienced advisors to be sure of your position before beginning the process of opposition.

Want to oppose a trade mark and need help?

At Virtuoso Legal, we specialise in trade mark law and can guide you through every step of the opposition process.

Whether you’re looking to file an opposition or respond to one, our expert team is here to provide the support and strategic insight you need to protect your brand.

Contact us today to find out how we can help.

Stay tuned for our next article, where we’ll explore what to do if your trade mark application is opposed.

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​The content on this website, including FAQs and legal posts, is for general informational purposes only and does not constitute legal advice. Laws vary by jurisdiction, and specific advice should always be sought for individual circumstances. Virtuoso Legal is not responsible for any losses arising from reliance on this content. For tailored advice, please contact us at 0113 237 9900 or enquiries@virtuosolegal.com.