IPO disputes (UKIPO, EUIPO, WIPO): Global contentious IP administration
Many firms, including generalist law firms and non-contentious trade mark attorney practices, face a gap when their clients require contentious representation before the major Intellectual Property Offices (IPOs).
We fill that gap, serving as your expert IPO disputes desk for challenges to trade mark and design registrations both in the UK and internationally.
We manage the administrative fight, building a robust, evidence-backed case while operating under our discreet, advisory service to fully protect your firm’s client relationship.
What are they?
IPO disputes involve formal, inter partes proceedings before administrative bodies, such as the UK Intellectual Property Office (UKIPO), the European Union Intellectual Property Office (EUIPO), and the World Intellectual Property Organisation (WIPO).
These disputes primarily concern:
- Oppositions: Challenging a pending application before it is registered.
- Invalidations/cancellations: Challenging a registered trade mark or design.
While administrative, these disputes require a highly specialised, litigation-informed strategy, as the evidence and arguments used often determine a mark's ability to survive in subsequent court battles.
IPO disputes: How we assist you
We empower your firm to offer comprehensive, global IP protection by seamlessly handling the contentious administrative work that requires a specialist focus.
- Integrated strategy: We conduct comprehensive assessments to advise your firm on how the administrative action aligns with the client’s broader commercial and potential litigation goals.
- Evidence and submissions: We manage the complex process of gathering, preparing, and filing the specialist evidence (e.g. evidence of use, market perception) required by each office's procedural rules.
- Cross-jurisdictional management: We act as direct counsel for contentious proceedings before the UKIPO and coordinate and advise on strategy for proceedings before the EUIPO and WIPO, ensuring consistency across key markets.
- Settlement and coexistence: We leverage our deep experience in Alternative Dispute Resolution (ADR) to negotiate commercially sound coexistence agreements, resolving the administrative dispute without the need for a protracted, expensive formal ruling.
Our unique capability in this area
Our firm's strength in IPO disputes comes directly from our litigation-first perspective. We view every opposition and invalidation as a "pre-trial battle", ensuring the result is future-proofed against court challenges.
- Litigation insight: We know the exact legal and evidential requirements that a trade mark must meet to survive a challenge in the High Court. This insight allows us to build an unassailable defence for your client's marks or dismantle an opponent’s mark using arguments that are court-tested.
- Cost efficiency: We provide a focused, cost-effective strategy for administrative action, preventing the dispute from unnecessarily escalating to expensive litigation while achieving the desired commercial outcome.
- Partner assurance: By relying on our specialised expertise, your firm avoids the ethical and procedural risks associated with handling contentious administrative work outside of your core competency.
IPO Disputes (UKIPO, EUIPO, WIPO): Common Questions and Answers
What is the difference between the UKIPO, EUIPO, and WIPO?
The UKIPO grants rights valid only in the UK. The EUIPO grants rights (EUTMs/RCDs) valid across all 27 EU member states. WIPO manages the Madrid and Hague systems, which allow a single application to designate multiple member countries, simplifying international filing.
We advise on and manage contentious actions across all three.
Why is litigation expertise important for an administrative IPO dispute?
An administrative dispute is a legal challenge. The best strategy is determined by predicting the likelihood of success if the matter escalates to court.
Our litigation firm's insight allows us to assess evidence strength, predict opposition grounds, and strategically settle or push a case based on court-tested viability, a depth of insight that generalist filing firms cannot offer.
How do you manage disputes across multiple jurisdictions (e.g., EUIPO and WIPO)?
We adopt a unified strategic command.
We ensure that any evidence or argument used in one territory (e.g. a WIPO opposition) does not create an adverse precedent in another (e.g. a subsequent UKIPO invalidation).
This coordinated strategy protects the client's global IP rights holistically.
What cost model is typically used for IPO disputes?
IPO disputes are ideally suited for fixed phase pricing.
We can usually agree on a fixed fee for core actions, such as drafting the opposition submission, filing the evidence rounds, or preparing for an oral hearing.
This provides your client with budget certainty and allows you to manage the costs predictably.
Partner with specialist IP counsel
Ensure your clients' trade marks and designs are protected with a global, litigation-informed strategy at the intellectual property offices. Use the calendar below to arrange a confidential consultation on how we can integrate our IPO disputes expertise into your firm's service offering.
The content on this page is provided for general informational purposes only and does not constitute legal advice. No solicitor-client relationship is created by your use of this site. While we strive to ensure the information is accurate and up-to-date, it should not be relied upon as a substitute for professional legal counsel. For specific advice regarding your legal situation, please contact us directly to arrange a consultation.
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