Opposing a UK trade mark application

The UK Intellectual Property Office (UK IPO) is responsible for registering UK trade marks.

Once a trade mark application is submitted to the UK IPO, it is examined. If accepted at the examination stage, it will proceed to publication. At publication, third parties are informed about the application and can formally challenge its registration. If unchallenged or any conflict is overcome, the trade mark becomes registered.

For further information on the process of registering a trade mark, please see our guide on why you should register a trade mark.

The UK IPO aims to issue examination reports within 10 days of receiving a new trade mark application. During the examination stage of an application, the UK IPO will review the mark and the goods and/or services applied for and raise any objections to its registration. As part of this process it will also consider earlier trade mark registrations covering the UK and it will cite any potentially conflicting marks in the examination report.

If a third-party mark is cited, the owner of that earlier mark will be sent correspondence notifying them of the trade mark application. The notification itself is not a bar to registration of the mark – if the owner of the earlier mark wishes to take action against the application it must formally oppose it. However, as the UK IPO does not always identify all marks that a trade mark owner may find concerning, it is not recommended to solely rely on the UK IPO’s notification. Instead, we strongly recommend putting in place a trade mark watching service for your trade mark(s).

For more information on this service, see our brand watch notice guide.

After examination, the application is published which kick-starts a two-month period (the publication period) where a third party can oppose the registration of a trade mark.

The publication period is extendable by one additional month if an interested third-party file a Notice of Threatened Opposition within the publication period – meaning an aggrieved party can oppose the trade mark within three months from the publication date.

A trade mark opposition is a legal procedure that can be used to prevent a trade mark from being registered in the UK. Usually, an opposition is filed because a third party considers that the application conflicts with its earlier right.

If an opposition is raised against your application, this will delay the registration process. If the opposition is successful, it can prevent your trade mark from being registered (in whole or part).

A third party may oppose another party’s trade mark application because it seemingly conflicts with its earlier right(s). This is the “relative ground” of opposition explored below.

Alternatively, a third party may oppose a trade mark on more general grounds, i.e. the “absolute ground” of opposition. This could be on the basis that the proposed trade mark features a word that describes the goods/services it intends to protect or that the trade mark is not capable of functioning as a trade mark (i.e., it is not distinctive). For example, the mark ENGLISH LAW FIRM covering legal services would be descriptive of the services provided and, therefore, non-distinct.

Anyone can oppose another party’s trade mark application on absolute grounds. These grounds cover situations where a proposed trade mark is considered defective in some way and should not be registered. The grounds include, but are not limited to, the proposed mark being considered: generic, not distinctive and/or descriptive for the goods and/or services applied for; immoral; and/or deceptive to the public.

For example, you cannot obtain a registration for the mark FOUR BY FOUR that looks to protect vehicles (it would be descriptive of motor vehicles with a four-wheel drive capability), nor would it be acceptable to register a non-fanciful animal as a logo for goods derived from it – such as a plain and non-fanciful looking cow being registered for milk (this would be non-distinctive).

To rely on the relative grounds for opposing a trade mark application, the opponent must be an earlier right owner (registered or unregistered) who considers that the trade mark application conflicts with its earlier right. This is because the proposed trade mark and goods and/or services applied for are:

• Identical or confusingly similar to an existing registered trade mark and the goods and/or services registered are identical or similar to the earlier mark.
• In conflict with an existing prior common law right.
• Identical/similar to an earlier trade mark with a reputation and, without due cause, the applied for mark takes unfair advantage of that earlier mark or is detrimental to its distinctive character or repute.

As soon as an aggrieved party becomes aware of a third party application, they should consider outlining their concerns directly with the “applicant” (i.e. the entity who filed the trade mark application) to try to reach a settlement before commencing legal proceedings. A quick and amicable solution is usually preferable for all parties involved.

If a more formal route is desired, it is advisable to file a Notice of Threatened Opposition at the UK IPO to allow time to liaise with the other side and decide on an opposition strategy. This extends the two month opposition deadline to three months from the date of publication. Without filing the notice, if an opposition is later filed and continues to a decision, the opponent may be prejudiced in costs.

To start formal legal proceedings, the opponent must file a Notice of Opposition along with the relevant fee at the UK IPO within the two (or three) month deadline.

If the applicant does not file a defence and counterstatement or request a “cooling off” period within two months of being notified about the opposition, its application will be deemed abandoned either in whole or in part. This deadline is generally not extendible.

A cooling-off period is a temporary halt in the opposition proceedings where the parties should be exploring possible settlement options. It must be mutually agreed and the appropriate form must be filed at the UK IPO before the deadline to file a defence and counterstatement.

Nine months will be initially granted, but it can be extended by a further nine months if the parties mutually agree. Either party may terminate the cooling-off period at any time.

Evidence is not compulsory unless the opponent is requested to prove that they have used an earlier trade mark it has relied upon that has been registered for over five years. If evidence is filed, it must be in a specific form and it must show that the earlier trade mark has been used on the registered goods and/or services the opponent relies upon in the opposition.

Each party can choose whether to submit any evidence to support its arguments. The Tribunal will specify the timetable for filing evidence and submissions. Any evidence filed is usually in the form of a witness statement, with exhibits that further support the statements being made. Evidence from surveys is generally not received well and expert evidence is typically unnecessary – both types of evidence require the Hearing Officer’s permission to be filed.

A party can present its legal arguments in a written submission if it does not want to add any facts to the evidence but wish to comment on the other side’s evidence.

A copy of any evidence and/or written submissions must be sent to the other party and the Tribunal.

The length of an opposition varies considerably depending on various factors – such as the complexities in the opposition, the grounds argued, whether evidence is submitted and if there is a cooling off period. If the opposition is smooth, it typically takes nine to twelve months – though it is not uncommon for them to last up to three years.

There is also a ‘Fast Track’ opposition procedure suited for more simple oppositions where the opposition is generally streamlined and permission is required for evidence.

Trade mark is published in the Trade Mark Journal and this then starts a two month opposition period during which a third party (the opponent) has the opportunity to oppose the trade mark application.

Any opposition must be filed within the opposition period.

This period can be extended by one month to three months by filing a Notice of Threatened Opposition.

Opponent files Notice of Opposition and relevant fee at the UKIPO.

The Tribunal reviews the opposition and may request further clarification from the opponent on the grounds.

Applicant has two months from notification of the opposition to file their defence and counterstatement.

Deadline extendible by a total of 18 months if both parties agree to enter a “cooling off period”.

If no defence or cooling-off request is filed, the application is treated as abandoned either in its entirety or in relation to certain goods/services against which the opposition has been filed.

The Tribunal may issue a non-binding Preliminary Indication indicating the likely outcome of proceedings.

The Tribunal provides a timetable to the parties detailing the evidence and/or written submissions deadlines for each party. They may be extended.

Opposition is decided at a hearing or based on the papers filed.

Most decisions are decided on the papers. However, any party and/or the Hearing Officer can request a hearing.

Parties have an opportunity to file further submissions.

The Hearing Officer will issue the decision and may award costs to the winning side based on a scale. Most awards are low as they are intended to be contributory.

If there is an error on a point of law or the decision was unreasonable, each party has 28 days from the decision to file an appeal to the Appointed Person or High Court.

The trade mark opposition procedure follows several stages, as set out above. Typically, they move through similar stages to those of court proceedings. Namely exchange of statements of case and evidence and submissions before a hearing or decision on the papers.

Costs will vary depending on the evidence and submissions filed by each party and the stage the opposition reaches. Most decisions are made on the papers, thereby keeping the costs low. However, should one party request a hearing, a hearing will take place and push up the costs significantly.

For full blown oppositions the average costs can range from £5,000 through to £30,000 (plus VAT), but most of the cases settle well before costs reach this stage.
Currently, only 25% of oppositions received are defended and out of them 35% proceed to a decision.

If an opposition reaches a decision, there are three outcomes:

• Full success / opposition upheld – the trade mark and goods and/or services opposed will be refused registration either in its entirety or in relation to certain goods and/or services which have been opposed.
• partial success / opposition partially upheld – part of the goods and/or services opposed will be refused registration.
• no success / opposition rejected – the trade mark and goods and/or services opposed will remain as filed.

Subject to the parties’ behaviour, costs will be awarded to the successful party according to a scale of costs – the costs awarded are contributory and typically much lower than actual costs incurred. If the party has behaved unreasonably, off scale costs can be requested. If there is a partial success, the UK IPO often decides that each party should bear their own costs. If the cost award is unpaid, enforcement of the cost award is the responsibility of the successful party.

If either party disagrees with the decision on the basis that the Hearing Officer (who issues the decision) has made an error in a point of law, the decision is appealable via the Appointed Person or the High Court, at a cost. The Appointed Person is an independent senior intellectual property lawyer appointed by the Ministry of Justice and the route is a more simplified and low-cost alternative to appealing to the High Court which provides a final decision. The High Court is more expensive, timely and can be appealed further.