Trademark oppositions can derail registration
But they don't have to. Here's what you need to know to keep your registration on track.
Photo by James Coleman on Unsplash
Words by Dr Martin Douglas Hendry
Trademark opposition is a process that allows third parties to challenge the registration of a trademark. In the UK, if someone believes that a trademark that has been applied for is similar to one that they already own or that it may cause confusion among consumers, they can file an opposition to the trademark registration. This can be a stressful and confusing process for the person or company whose trademark is being opposed. In this blog post, we will take a look at the trademark opposition process in the UK and explore what steps you should take if your trademark is ever opposed.
Understanding the Opposition Process
The trademark opposition process in the UK is handled by the Intellectual Property Office (IPO). When a trademark application is filed, it is published in the trade marks journal. If a third party believes that the trademark in question is similar to one that they already own or that it may cause confusion among consumers, they can file an opposition to the trademark registration within a certain timeframe.
Grounds for opposition include:
- the applied-for mark is identical or similar to an existing registered trademark
- the applied-for mark is similar to an existing unregistered trademark
- the applied-for mark is descriptive or non-distinctive
- the applied-for mark is misleading
- the applied-for mark is offensive
The timeline for the opposition process can vary depending on the specific circumstances, but generally, the process takes several months to a year to complete.
Responding to an Opposition
If you receive an opposition notice, it is important to respond in a timely manner. You will be given a deadline for responding and failing to meet that deadline can result in your trademark registration being refused.
When responding, you should present arguments and evidence to show why the opposition should not be successful. This can include evidence of acquired distinctiveness, evidence that the trademarks in question are not similar, or evidence that the opposition is frivolous.
Options for settling the opposition include negotiating a coexistence agreement or amending the trademark application to address the grounds for opposition.
Going to Hearing
If the opposition is not settled, it will proceed to a hearing. At the hearing, a hearing officer will consider the arguments and evidence presented by both sides and make a decision on whether the trademark registration should be granted or refused.
Preparing for a hearing can involve gathering evidence, preparing witness statements, and consulting with legal counsel. Representation at a hearing is optional, but it is highly recommended as the process can be complicated.
After the Hearing
After the hearing, the hearing officer will issue a decision. Possible outcomes include:
- the opposition is successful, and the trademark registration is refused
- the opposition is unsuccessful, and the trademark registration is granted
- the opposition is partially successful, and the trademark registration is granted with limitations
- If the decision is not in your favour, you have the option to appeal the decision to the Appointed Person or the High Court.
If the decision is in your favour, the next step is to complete the registration process and pay the registration fee.
Trademark opposition can be a stressful and confusing process, but it is important to understand the process and take the necessary steps to respond to an opposition. It is crucial to gather evidence, prepare arguments, and seek legal counsel. It's also important to keep in mind that the opposition process is designed to protect consumers from confusion and to ensure fair competition in the market. If you are facing an opposition, stay calm, be prepared and take appropriate actions.
If you need expert help in dealing with an opposition, contact our team of legal experts by clicking the button below. They will outline the best solution for you, and provide a quote for assistance.
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DISCLAIMER: The content within this post is for educational purposes only and does not constitute legal advice. Virtuoso Legal does not take any responsibility for those that use this information and waives any liability for any resulting effect on your personal or commercial circumstances.
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