People often ring us up when they receive a note of threatened opposition to their trade mark application so I thought it might be useful to give an overview of the UK Intellectual Property Office’s opposition process.
The UKIPO provides a number of guidance documents about UK oppositions which provide detailed information and advice about all aspects of the opposition process. Rather than duplicating those notes, I want to give you a short overview with weblinks to the relevant UKIPO information.
What is an opposition about?
All UK trade mark applications are published by the UKIPO for a period of two months (extendible by one month). Publication allows third parties to oppose registration if they consider that the UK mark should not proceed to registration.
There are many grounds on which you can oppose the registration. A common reason is that the published mark is confusingly similar to an earlier mark owned by you for the same or similar goods or services.
However, you can also oppose a UK mark if you consider that it should not have been accepted by the UKIPO: for example, if the published mark is descriptive of the goods or services or if it was filed by the applicant in bad faith.
For more information on the UKIPO’s website about oppositions, click this: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section
Outline of the opposition procedure:
The main steps in a UK opposition are as follows:
- Usually, you will contact the applicant asking them to withdraw (or limit) their application under threat of filing opposition. Failure to do this may lead to you later losing costs even if you win the opposition.
- You can oppose a UK mark by filing Notice of Opposition (Form TM7) before the end of the opposition period. This form sets out your opposition claims.
- The applicant then has 2 months to reply by filing a Defence & Counterstatement. This is usually a denial of your claims.
- If a Defence & Counterstatement is filed, each side is given 2 months to file its evidence. First, you have 2 months to file evidence in support of your opposition (e.g. evidence of the reputation or use of your earlier mark). Then, the applicant will have 2 months to file evidence in defence of its trade mark application.
- When the evidence has been filed, the UKIPO asks if either side wants to have an oral Hearing. This is held before a Hearing Officer at which you or your lawyer will have the opportunity to argue your case in person. If neither side requests a hearing, the UKIPO will decide the matter based on the written evidence and legal submissions which have been filed.
- Within a few months, the UKIPO will issue its decision, upholding or rejecting the opposition either in full or in part, and awarding costs to the winning side.
- Either side can appeal the decision of the UKIPO.
What happens before filing opposition?
If you (or your lawyer) become aware of a UK trade mark application which you believe should not be registered, it is usual to contact the applicant requesting that they voluntarily withdraw their application, in whole or in part.
This is important because if you do not do so and you successfully oppose the mark, the UKIPO may penalise you on costs (i.e. you may forfeit some of the award of costs). You can extend the 2-month opposition period by an additional month if you apply to the UKIPO before the end of the initial 2-month period. This is done by filing a form TM7a for which there are no official fees. For more information on filing a TM7a click on this: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.3.
Filing a Notice of Opposition:
Notice of Opposition is filed by means of Form TM7.
The standard official fee is £200. It is also possible to file a Fast-Track Opposition (TM7F) for a reduced official fee of £100 where you rely on limited grounds of opposition.
Click on this https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.13 for more information about Fast-Track oppositions.
You can claim a number of different grounds of opposition in the standard Notice of Opposition (TM7). These are divided into two broad categories:
A. – if you believe that the UKIPO should not have accepted the UK mark for registration. This might be because the UK mark is descriptive, generic, a standard term in the trade, or if you believe it was filed in bad faith. These are called Absolute Grounds of opposition.
B. – if you believe that registration of the UK mark would be in conflict with your earlier trade mark rights (or other rights such as a design or copyright). These are called Relative Grounds of opposition.
Most oppositions are filed because the opponent is the holder of an earlier trade mark (UK mark, EUTM, or International mark protected in the UK) and registration of the later UK mark would be in conflict with the earlier mark.
The standard grounds (Relative Grounds) on which opposition are normally filed are:
- Likelihood of confusion: you claim that the UK mark is the same or similar to your earlier mark for the same or similar goods/services such that there is a risk of confusion among the relevant consumers.
- Reputation grounds: you claim that your mark enjoys a reputation in the UK (or the EU if it is a EUTM) and the use of the UK mark would take unfair advantage of or be detrimental to the repute or distinctiveness of your mark.
- Unregistered marks: if your mark enjoys goodwill and reputation in the UK then regardless of whether it is a registered mark, you can oppose the later UK mark if you can prove that use of the UK mark would be likely to cause consumer confusion (in legal terms, that it would amount to passing-off).
For detailed guidance notes on how to complete the Notice of Opposition, click here:https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.4.
What happens after the Notice of Opposition has been filed?
The UKIPO will transmit the Notice of Opposition to the applicant who is given 2 months to respond by filing a Defence & Counterstatement (Form TM8). If no defence is filed, the UKIPO will reject the UK mark and costs may be awarded to the opponent.
If the applicant files a Defence & Counterstatement (Form TM8) within the permitted period, the UKIPO will forward it to you. For more information on the Defence & Counterstatement, click here : https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.6.
If the parties should decide to enter into discussions after opposition has been filed, it is possible to defer the next steps in the proceedings (including the filing of the Defence & Counterstatement) by requesting a 9 month cooling-off period. This request must be made, by both sides, before the deadline to file the Defence & Counterstatement by filing form TM9C. It is possible to extend the cooling-off period to a maximum of 18 months (if the parties file a TM9E before the end of the 9 month period). For more information about the cooling-off period, click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.8.
The evidence rounds in a trade mark opposition:
After the applicant has filed its Defence & Counterstatement, the UKIPO will allow you 2 months to file your evidence in support of your opposition. This is factual evidence and not a legal argument.
The most common reasons for filing evidence are:
- if your earlier mark is registered for more than 5 years, you will normally be required to file proof of evidence of the use of your mark in the UK (or in the EU if your earlier mark is a EUTM). For more information on proof of use, click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.10.
- If you claim a reputation for your mark, you will need to file evidence of your reputation in the UK (or in the EU if your mark is a EUTM).
- If you claim that your earlier mark enjoys a goodwill and reputation in the UK, you will need to file evidence of your reputation in the UK.
- If you claim that your earlier mark is a well-known mark, you will need to file evidence that it is a well-known mark in the UK.
Evidence is usually provided in a Witness Statement which is a statement of the facts which you rely on in your opposition. Supporting evidence (e.g. sample invoices or examples of advertisements) is attached to the Witness Statement as exhibits. Usually, the evidence can be filed with the UKIPO by email (and a copy must be sent to the applicant).
For more detail on the preparation of and the contents of a Witness Statement, click here: https://www.justice.gov.uk/courts/procedure-rules/civil/rules/part32/pd_part32#17.1.
For an example of a Witness Statement (bare-bones only), click here: https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/311793/completedwitnessstatements.pdf.
If, however, your earlier mark is a recently-registered trade mark such that your mark is not yet subject to the use requirement (i.e. the requirement to prove use of marks registered for more than 5 years), you may not need to file any evidence because, in these circumstances, you would be simply relying on the legal rights arising from your trade mark registration. In that event, you would not file any factual evidence and, instead, you (or your lawyer) would later just file legal arguments in support of your opposition.
The applicant’s evidence:
The applicant will be allowed 2 months to file any evidence it wishes in defence of its UK trade mark application. The UKIPO will forward a copy of your evidence to you (or your lawyer).
The decision of the UKIPO:
After both sides have had an opportunity to file evidence, the UKIPO will ask each side if it would like an oral Hearing. If neither side requests an oral hearing, the UKIPO Hearing Officer will decide the case based on the documents and evidence that have been filed in the proceedings and after giving each side the opportunity to file legal submissions. The Hearing Officer allows 2 weeks for filing legal submissions. The decision will normally issue within a period of 2 months thereafter.
If either side requests an oral Hearing, the UKIPO will schedule a hearing, which is usually by video conference or a physical hearing in London or Newport. For more complex cases (such as cases with cross-examination), it is common for the parties to be represented by a barrister; otherwise, the parties are usually represented by their solicitor or attorney.
- For more information on hearings in opposition proceedings, include the oral main hearing, please click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §6.
Cost awards in a trade mark opposition:
- The general rule is that the winning side is entitled to an award of costs. The UKIPO uses a scale of costs in order to decide how much money to award the winning side. For more detail on the award of costs and the scale of costs awards, click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §5.
As a brief summary, the current scale of costs awards provides:
- preparation of evidence: £500 – £2000
- preparing a Witness Statement and considering a statement of the other side: £200 – £650.
- preparing legal submissions: £300 – £500
- preparing for and attending an oral hearing: up to £1300 per day of the hearing, capped at £3300.
Appealing the decision of the UKIPO Hearing Officer:
- Either side can appeal the decision of the UKIPO hearing officer. You can appeal to the Appointed Person or to the High Court. The Appointed Person is a senior lawyer appointed by the Government and their decision is final and unappealable. Alternatively, you can appeal to the High Court, the judgment of which may itself be appealed to a higher court. For more information on appealing a decision of the UKIPO, click here:https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §7.
So, the starting point if you are facing an opposition is to review this information and then decide whether you want to get an expert involved to give you an opinion and act for you or whether you prefer to withdraw your application and try for a different name.