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UKIPO trademark registration, oppositions and invalidations
Imagine you’ve developed a revolutionary smartphone and invested heavily in branding it. Shortly after filing for trade mark registration, a major competitor opposes your application, claiming it is too similar to their established brand.
This can delay your product launch and increase costs.
We provide swift, strategic action to address such issues. Our solutions include gathering evidence, negotiating settlements, and representing you in hearings. Trust our expertise to ensure your brand is protected, giving you confidence and relief from the legal worries of UK trade mark application.
Trade marks are so called registered right. This means that once the trade mark is filed, it is then examined and advertised. An opposition is filed through a formal process where a third party challenges the registration of a trade mark. A UK trade mark application normally takes around 3 to 4 months before being granted, unless it is opposed.
The process begins with the publication of the trade mark application after filing, allowing anyone to file an opposition within two months of the advert. Grounds for opposition can include similarity to existing trade marks or potential confusion.
First is the examination phase, where a trade mark examiner evaluates the application to determine if it qualifies for registration. During this stage the examiner may decide that there are absolute grounds to stop the mark from being published. We often see this arise where people have filed a descriptive mark which describes the product or process for which it is attached to.
The Opposition Phase
The second phase is the opposition phase, where the trade mark is published as part of the trade mark application in the trade marks journal, allowing existing rights holders to oppose if the new trade mark is too similar to their own. Quite often here we see relative grounds cited as a reason for rejecting the mark and these may include reasons such as it is too close to an earlier trade mark. It is at this stage that brand owners become aware of a threatened opposition to their mark. They can then take advantage of a cooling off period to try and settle the matter.
You need to know about the likelihood of opposition, how to prevent it initially, and how to manage it if it occurs. We assist people here by doing a full clearance search to make sure the trade mark is properly applied for and that there are no earlier rights. This way we can avoid a trade mark opposition proceedings and objections on absolute grounds or relative grounds.
The opposition procedure is complex and time consuming an needs a legal expert. If you are involved in this then you will need to provide your lawyer with a great deal of information which should include, sales invoices, sales records showing financial turnover, international registrations, geographical area of operation, genuine use, such advertising use as it relevant in a particular area, personal knowledge and a witness statement. Filing evidence comes in several different rounds. Legal arguments are then set out in legal documents and pleadings which are submitted to the trade mark office. In especially difficult cases, matters are decided by the Appointed Person.
Find out what can be registered as a trade mark here.
Threatened Opposition After Trade Mark Application
A notice of threatened opposition is an initial step where a third party formally indicates their intention to oppose your trade mark application. The first stage if this is called a TM7A and this notice extends the time submit a full blown opposition to the IPO. This TM7A notice can serve as a warning and may or may not lead to formal opposition proceedings. The opposition period depends on the publication date. The relevant period is or opposition period is a two month period after publication. However, this period is extended to 3 months after a TM7A is submitted. This time can often be used to resolve matters by contacting a potential opponent and discussing ways of an amicable settlement, such as a co-existence agreement. This cooling off period gives the parties a reasonable opportunity to settle matters. In certain circumstances, a dispute can be avoided altogether.
If there is no settlement, then a TM7 is then submitted together with the grounds of the opposition set out. This is the start of the opposition procedure. As a trade mark is a valuable commercial asset it is important to defend your trade marks. These are legal arguments and are set out like legal documents. An opponent will set out why that have opposed mark should not be allowed. This will often include material such as advertising materials, similar sales records and other relevant evidence all of which can be used for opposition purposes. Brand owners are well advise to start this process straight away as any decisions usually take a further nine months before handed down.
At Virtuoso Legal, we offer expert guidance to negotiate this process, assess the threat's validity, and formulate a response.
Our strategic approach ensures your brand is protected, providing you with the confidence and reassurance needed to handle such challenges effectively. Contact us for comprehensive support and successful outcomes.
Cooling Off Period
In the UK, the cooling off period is a designated phase in the trade mark opposition process allowing both parties to negotiate a settlement without proceeding to a formal hearing. This period typically lasts up to nine months and can be extended if both parties agree. We use this time to mediate and seek amicable resolutions, potentially avoiding protracted legal disputes. Our specialists ensure your interests are effectively represented and protected.
Receiving An Opposition
Receiving a trade mark opposition can feel like a kick in the teeth, but with Virtuoso Legal by your side, you can take this challenge in your stride. When you receive an opposition, you have several options.
Withdraw Your Application: This ends the process but relinquishes your claim to the mark. It can be a strategic choice if the opposition is strong and costly to contest.
Negotiate a Settlement: Engage in discussions with the opposing party to reach an amicable agreement. This can often result in a compromise that allows both parties to coexist peacefully.
Defend Your Application: Present evidence and arguments to support your trade mark and counter the opposition. Our experts will create a watertight defence to maximise your chances of success. As set out above, we will need full details of your evidence and we will obtain that at an early stage. We also need full details of the applicant's goods, your goods and details of any evidence filed. There are several rounds of evidence and then written submission and final submissions.
It is important to file evidence in accordance with the IPO procedures. In some cases there is an oral hearing. There are cost consequences for the unsuccessful party an any mark opposition. However, the costs awarded are far lower than in High Court proceedings and are based on an official scale. If you are the successful party, you are unlikely to recover all your costs. The Appointed Person may be asked to provide a ruling in certain circumstances.
Request an Extension: Seek more time to prepare your response or negotiate further. This can provide valuable time to gather additional evidence or explore settlement options.
We provide expert counsel through each step, ensuring your rights are protected and your interests represented. Our commitment to client success and comprehensive legal solutions will give you the reassurance and support needed to achieve a favourable outcome.
Submit The Right Evidence
Submitting the right evidence is crucial in trade mark opposition cases. If you'd like to apply for a trade mark, you need to consider the following:
Similarity to an earlier trade mark in identical or similar goods/services
Who else has used the brand or anything similar - do some searches on Google?
Who has the domain names or social media handles?
Unfair advantage or detriment to the reputation of an earlier mark - is there anything similar which might cause a problem?
Compliance with legal requirements, including passing off
Distinctiveness and non-generic nature of the trade mark
Good faith in the application process
Detailed evidence strengthens your position.
Our expertise ensures that every piece of evidence is well-prepared and strategically presented, giving you the confidence and assurance of a successful outcome.
Absolute Or Relative Grounds
Trade mark opposition can be based on absolute or relative grounds. Absolute grounds include lack of distinctiveness, being descriptive, or contrary to public policy. Relative grounds involve conflicts with earlier similar trade marks, causing confusion among consumers.
We analyse each case carefully to identify the most effective defence strategies. Our expertise ensures your brand is protected against both types of opposition, providing you with confidence and peace of mind.
Avoiding Trade Mark Opposition Proceedings
Avoiding trade mark opposition proceedings begins with creating a unique and legally distinct brand. At Virtuoso Legal, we emphasise the importance of distinctiveness during the brand development stage, ensuring your brand stands out both commercially and legally. Adhering to advice from the UK Intellectual Property Office and trade mark specialists like us can significantly reduce opposition risks. Conducting thorough clearance searches helps identify potential conflicts early, allowing for necessary adjustments before application. This proactive approach safeguards your brand, providing confidence and relief from legal worries. Contact us for expert guidance in trade mark registration.
Opposing A Trade Mark
If you are an existing rights holder and discover a newly published trade mark that conflicts with your own, you have the opportunity to oppose it. Opposing a trade mark involves entering into negotiations, potentially leading to formal proceedings.
Seeking professional advice is crucial to enhance your chances of a favourable outcome.
As well as helping clients with opposition matters we also help clients with international registrations of brands and designs, invalidity procedures, ownership disputes and online monitoring of trade mark applications or online monitoring of infringements.
Get In Touch With Our Intellectual Property Lawyers
“For over ten years Liz and her dedicated team have looked are my company’s IP risk and many of my clients requirements. They always deliver and are extremely knowledgeable in all aspects of IP, Brand and global business. You’re in safe hands with Virtuoso Legal.”
Contact Form: Visit the contact page and fill out the form with your details and a description of your issue. Submit the form, and a team member will respond promptly.
Telephone: Call 0113 237 9900 to speak with the reception team, who will pass your details to a specialist for follow-up.
Email: Send an email to enquiries@virtuosolegal.com with your contact information and issue details. A team member will respond within 24 hours to arrange a consultation.
We've answered some frequently asked questions about how we can help with trade mark opposition
What Is An Opposition To A Trade Mark?
An opposition to a trade mark is a formal objection raised by an existing rights holder against the registration of a new trade mark. This process occurs during the publication phase, where the new trade mark is made public, allowing others to challenge it if it infringes on their existing rights. Oppositions are based on grounds such as similarity to an existing registered trade mark, potential confusion, or detrimental impact on the reputation of an established brand.
What Are The Grounds For Trade Mark Opposition?
The grounds for an opposition include similarity to an existing trade mark, causing potential confusion among consumers. Opposition can also arise if the new trade mark takes unfair advantage of or is detrimental to the reputation of an existing mark. Other grounds include non-compliance with legal requirements, such as lack of distinctiveness or being descriptive. Bad faith refers to applying for a trade mark with dishonest intent, such as to block or exploit an existing brand unfairly. At Virtuoso Legal, we provide specialist support to handle these complexities. Contact us for comprehensive support in trade mark opposition.
How Do You Respond To Trade Mark Opposition In The UK?
Responding to trade mark opposition in the UK requires a structured approach. First, know the filing date and then once the opposition is filed, thoroughly review the grounds and gather substantial evidence to counter the claims. Engage in negotiations with the opposing party to seek an amicable resolution. If necessary, prepare a robust legal defence, presenting clear arguments and supporting evidence. We provide specialist guidance throughout this process, ensuring your response is strategically sound and effective. Our comprehensive legal solutions help safeguard your trade mark and enhance the likelihood of a successful outcome.
What Is Passing Off In Trade Mark Opposition?
Passing off in trade mark opposition refers to the illegal practice where one party misrepresents its goods or services as those of another, causing confusion among consumers. This can harm the established brand's reputation and goodwill. To succeed in a passing off claim, the claimant must prove goodwill in their brand, misrepresentation by the defendant, and damage resulting from this misrepresentation.
Case Study: Reckitt & Colman Ltd v Borden Inc (1990)
A notable passing off case is Reckitt & Colman Ltd v Borden Inc, where Reckitt & Colman claimed Borden's lemon juice packaging was misleading consumers into thinking it was the same as their well-known Jif lemon juice. The court ruled in favour of Reckitt & Colman, emphasising the importance of protecting brand identity and consumer trust.
Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide. Virtuoso Legal's team of IP Lawyers, Trademark Lawyers & Copyright Lawyers 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: The content within this post is for educational purposes only. Virtuoso Legal does not take any responsibility for those that use this information and waive any liability for any resulting effect on your personal or commercial circumstances. If you are experiencing an issue and need advice, we strongly encourage you to contact a solicitor to identify your best course of action.
“Trademark registration is both an art and a science. It is important that when registering a trademark a business is able to secure the best possible asset for their business. This means navigating the tricky and unique area of trademark law and tailoring a trademark application to give a business the broadest scope of protection for their brands. The devil is in the detail and whether it's self-filed or non-specialist filed, we see marks which simply don't stand up to scrutiny when tested by opposition, invalidation or other disputes as they arise. That's why we apply our time and expertise to ensure our clients have a solid foundation for their business activity - and an asset that serves them for decades to come.”
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.…
