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Trademark opposition: everything you need to know

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Brand protection

Trademark oppositions can put your trademark on the rocks! Here's what you need to know.

trademark opposition - image of a rocky shore being crashed with waves, a visual metaphor

Photo by Milos Lopusina on Unsplash

By Cameron Ward

 

 

Introduction

 

The process of registering a trademark (spelt “trade mark” in the United Kingdom) includes two main phases.

The first of these is the examination, where a trademark examiner reviews the trademark to see whether it can be registered as a functional trademark.

The second is the opposition phase, where the trademark is published to the trademark register and existing rights holders can seek to oppose a trademark if it is legally too close to their brand.

It is important for trademark applicants to be aware of the potential for an opposition to arise, how to avoid it in the first instance, and how to deal with one if received.

This guide provides an overview of the process of trademark opposition and how it works.

 

 

What is a trademark opposition?

 

A trademark opposition is a term used for the process by which existing right holders attempt to prevent a newly published trademark from proceeding to registration.

An opposition can object to the entire application or a selection of the goods and services specified within the application.

The grounds on which someone can oppose a trademark application are:

  1. The trademark is identical or similar to an earlier trademark that is registered in respect of identical or similar goods or services
  2. The trademark takes unfair advantage of and/or is detrimental to the reputation of an earlier registered mark
  3. The trademark is contrary to the law i.e., the law of passing off (this is a term which refers to the use of unregistered trademarks)
  4. The trademark does not meet the requirements for registration e.g., lack of distinctive character, descriptive in nature, a generic term used in industry etc (there is more information about this here)
  5. The application has been made in bad faith e.g., to prevent the owner of an existing brand from formally registering their brand as a trademark

Note: Anyone can oppose an application for point 4 (i.e., a proposed trademark being descriptive, non-distinctive, generic), but only the proprietor of an existing and prior right or trademark can oppose on the other grounds.

 

 

At what point in the trademark application process can a trademark opposition occur?

 

After a trademark application has been examined by the UKIPO (United Kingdom Intellectual Property Office) or other relevant IPO, the application is then published in the trademark journal.

From the date of publication there is then a 2-month period within which an opposition can be filed. This is known as the “opposition period”.

In essence, this typically alerts those who have existing rights that a trademark is set to be registered, affording them the opportunity to oppose it if it comes too close to their existing rights.

This 2-month deadline can be extended by 1 month by filing a “notice of threatened opposition” before the 2 months expires.

Filing a notice of threatened opposition doesn’t commit you to filing a formal opposition, it merely gives you more breathing room to do so.

In many instances, this extension offers the two sides of an opposition to reach an agreement around the trademark’s registration – which can include things such as adjustments to the specification or a co-existence agreement.

It is also important to note that any extension, if granted, only applies to those who have filed the notice of threatened opposition, and not everyone else.

 

 

What can you do if you receive a trademark opposition?

 

If you have received a trademark opposition it is important not to panic – as there are several different ways that an opposition can be resolved. Notably, this usually requires an expert to manage the nuances and negotiation between parties.

The best steps forward are highly dependent on the situation, as such it is recommended that you receive expert advice in relation to this should you receive an opposition.

Resolutions to trademark oppositions include, but are not limited to: 1) seeking a co-existence arrangement, 2) entering a cooling-off period, 3) defending the application and 4) withdrawing the application.

 

Co-existence arrangements

 

It is standard practice for those who are thinking of opposing a trademark application to write to the applicant expressing their concerns about the application and setting out a proposed resolution or requesting that they withdraw the application. If correspondence is received, you should respond and try and enter a discussion whereby things can be resolved without the expense and effort of formal opposition proceedings. As above, it is important to have representation in such discussions to represent your interests in the best possible way.

It may be possible to come to an arrangement where both parties and brands co-exist e.g., the applicant may be able to limit their specification so that it doesn’t encroach upon the goods or services protected by the opposing parties’ trademark. Or the opposing party may only take issue with some of the goods and services that conflict with theirs and request that the class be removed from the application, rather than the whole application be withdrawn. These kinds of negotiations are all about limiting the damage to the desired scope of protection.

 

Defending your application

 

Once an opposition has been filed the applicant has 2 months within which to file a defence (and a counterclaim should they wish to include this).

If you are in open correspondence with the opposing party, parties may wish to enter a ‘cooling-off period’ to allow more time to settle the dispute outside of formal proceedings.

Filing for a cooling-off period within the 2-month period to file a defence will extend the said period by 7 months for a total of 9 months (referred to as “breathing room”). This can be extended by a further 9 months for a total of 18 months if necessary.

However, if negotiations have been unproductive and you are adamant that your trademark application is above board and wish for it to proceed to registration, you will need to defend your application, or the application will be abandoned.

Notably, once formal proceedings are started (i.e., a defence has been filed and rounds of evidence have begun), should you be unsuccessful or withdraw your mark, you will become liable for the other side’s costs. These proceedings require professional representation, and we encourage you to instruct trademark specialists when seeking to defend a registration. 

 

Withdrawal of the trademark application

 

If negotiations have failed and you see no way out (after speaking to solicitors), or you don’t want to deal with the hassle of opposition proceedings, then you can write to the UKIPO and opposing party informing them of the withdrawal.

This will save you time and expense defending the indefensible, allowing you to rethink your brand and perhaps take a different tack. Crucially, professional representation will be able to offer you a steer as to the likely prospect of success and the cost-benefit analysis of entering negotiations or defence proceedings.

Should this occur, the onus is on the business to approach the development of a brand which is less likely to encounter issues when published as it relates to opposition.

The next session of this guide provides information about how this is best achieved.

 

 

How do you avoid trademark oppositions?

 

It is best for business owners to approach the trademark registration of brands as a way of carving out distinct territory on the trademark register. This requires emphasis within the brand creation stage to create not only a brand which appeals to the buying public but one which is legally distinct. There are a few key tricks to doing so, as laid out below.

 

Have a unique brand

 

First and foremost a brand needs to be unique in the first instance and developed with this in mind.

It serves a business’ best purposes both in terms of having a distinct look and feel when compared with competitors – as well as legally speaking, being developed with uniqueness is a priority.

Again, it is important to be quite dispassionate at this stage, as a weak brand that is built on personal preference only serves to limit a business in the long run.

 

Adhere to advice

 

The Intellectual Property Office offers a range of advice about registering trademarks.

Advice is available both from the intellectual property office as well as from trademark specialists and law firms such as ourselves.

In every case, avoiding any risk of opposition at the outset means fewer problems down the line.

 

Clearance by trademark professionals

 

The proverbial “golden ticket” when it comes to applying for a trademark is to have a clearance search completed by trademark professionals.

These searches are completed before applying for a trademark and involve trademark professionals applying their experience and expertise to a range of searches on dedicated software.

At Virtuoso Legal, we use specialist software which helps landscape the trademarks on the registry and will highlight any existing trademarks with a degree of similarity to yours. This informs us and you of any potential risks and can alert us to parties that may oppose your mark should you apply for it. As such, the clearance search grants you the foresight to be aware of risks upon application – as well as the opportunity to make adjustments to your application to increase the likelihood of the registration going through without issue.

Helpfully, this can be done before applying for a trademark and save you from incurring the costs of an application that may have to be withdrawn or abandoned.

 

How do you oppose other people’s trademarks?

 

If you are an existing rights holder and you have become aware of a trademark that has been published for the opposition period, then you have the opportunity to oppose it.

Doing so means entering a negotiation with another business who are likely to have legal representation, which may even lead to formal proceedings.

As such, it is important to seek professional advice in doing so to increase the likelihood of you achieving the desired commercial outcome from engaging with the other side.

If you would like to oppose a trademark that is set to be registered, get in touch with our team to discuss your options.

 

Get in touch

 

 

Summary

 

Trademark opposition proceedings are often the last hurdle between a business and the ownership of a brand.

It is important to be aware that opposition proceedings can occur when seeking to register a trademark, and that they are all the more likely where the applicant has not prepared their application with this in mind.

However, an opposed application is not a lost cause by default; there are multiple ways that the opposition can be resolved, and your commercial interests can be secured, without having to throw in the metaphorical towel.

To speak to our team about trademark opposition (whether you are seeking to avoid, defend or apply for one), click the button below to contact our team.

 

Get in touch

 

 

PEOPLE ALSO ASK...

 

Take a look at our other guides that relate to this topic here.

 

Register a trademark

How to avoid trade mark infringement

What is a trademark?

 

ABOUT VIRTUOSO LEGAL

Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide. Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court. In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique. The firm and its professionals are ranked yearly in legal directories such as the Legal 500 and Chambers and Partners, cementing their status as a Top 2% law firm in the world.

 

Disclaimer: This FAQ should not be construed as legal advice on any specific facts. The contents are intended for general informational purposes only. You are urged to consult your own solicitor on any specific legal questions you may have.

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