Had your trade mark opposed? What to do next

Photo by James Coleman on Unsplash

Words by Dr Martin Douglas Hendry

Trade mark opposition is a process that allows third parties to challenge the registration of a trade mark. In the UK, if someone believes that a trade mark 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 trade mark registration. This can be a stressful and confusing process for the person or company whose trade mark is being opposed. In this blog post, we will take a look at the trade mark opposition process in the UK and explore what steps you should take if your trade mark is ever opposed.

Understanding the opposition process

The trade mark opposition process in the UK is handled by the Intellectual Property Office (IPO). When a trade mark application is filed, it is published in the trade marks journal. If a third party believes that the trade mark 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 trade mark registration within a certain timeframe.

Grounds for opposition include:

• The applied-for mark is identical or similar to an existing registered trade mark
• the applied-for mark is similar to an existing unregistered trade mark
• 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 trade mark 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 trade marks 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 trade mark 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 trade mark 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 trade mark registration is refused
• the opposition is unsuccessful, and the trade mark registration is granted
• the opposition is partially successful, and the trade mark 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.

Conclusion

Trade mark 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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