When a UK trade mark application is accepted it is published in the online Trade Mark Journal, giving interested third parties a two month period (which can be extended to three months) in which to oppose the application. This page briefly summarises the procedure.
The deadline to file an opposition to a UK trade mark application is two months from the date of publication. This can be extended for a further month by filing a Notice of Threatened Opposition. The NOTO is considered to be formal notification to an applicant of a potential opposition, and failure to give this notification can have cost implications in the event that formal opposition is subsequently filed. A NOTO is often filed when a potential opponent is still considering its options, but the extra month can be a useful period in which to start a dialogue with the applicant with a view to resolving the situation amicably.
Notice of opposition
The notice of opposition identifies the opponent (which must be the same party that filed a NOTO), and sets out the grounds of opposition. Briefly, these are divided into absolute grounds (that the mark is inherently unregistrable) and relative grounds (the mark should not be registered as it would conflict with earlier rights belonging to the opponent). The grounds set out the remedies sought, usually that the mark be refused registration altogether, or is registered with a limited specification of goods and services, and requesting an award of costs in favour of the opponent.
Once the notice of opposition is filed it is reviewed by the Trade Marks Registry and, provided that it meets formal requirements, is communicated to the applicant.
Filing of counterstatement
The proprietor is given two months in which to file a counterstatement setting out their defence to the opposition. The UK opposition procedure allows for a 'cooling off period' during which the parties to the opposition are encouraged to discuss terms of settlement, and this period can be extended in place of filing the defence. If the opposition cannot be resolved by the parties, however, the applicant must file its defence by the specified date to avoid the opposition being automatically upheld, and the application refused.
Preliminary indication and evidence rounds
Where appropriate, the Trade Mark Registry will issue a preliminary indication. In any event, the opponent is set a deadline to file evidence and arguments in support of the opposition. The applicant then has the opportunity to file evidence and arguments in reply. The final stage is for the opponent to file any further evidence which must be strictly in response to that filed by the applicant. Where the parties engage in settlement negotiations, it may be possible to have a stay of proceedings.
The parties to the opposition will be given the opportunity to request a Hearing, at which the opposition will be discussed with the Registry. If one party requests a Hearing, there will be one, but there is no obligation for the other party to attend. The alternative is for a decision to be reached on the basis of the papers submitted by the parties. Frequently there is a Case Management Conference to determine further progress of the case as well as a separate Main Hearing.
Decision and Appeal
The Hearing Officer will issue a decision in writing, which will uphold or dismiss the opposition, in part or in its entirety, and will frequently include a cost order in favour of the successful party. It is possible to appeal against a decision, to either the Appointed Person or the Court.
Contact us for more information on trade mark oppositions or any other trade mark-related matter. Our experienced trade mark attorneys are able to advise on all matters from filing strategy and new applications through to dispute resolution.
Author: Liz Lowe, Chartered Trade Mark Attorney