When a UK trade mark application is accepted it is published in the online Trade Mark Journal and third parties have a two month period (which can be extended to three months) during which they may file an opposition. 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 the filing of a Form 7a (notice of threatened opposition). It is often advisable for a potential opponent to start a dialogue with the applicant during this period of time and failure to do so may have costs implications.
Notice of opposition
The notice of opposition names the opponent (which must be the same as the party named on a Form 7a where filed) and sets out the grounds of opposition. Briefly, these are divided into absolute grounds (that the mark should not be registerable per se) and relative grounds (the mark should not be registered as it would conflict with earlier rights of the opponent). The grounds set out the remedies sought, usually that the mark is not registered or is registered with a limited specification of goods and services and that an award of costs is made in favour of the opponent.
Once the notice of opposition is filed it is reviewed and, provided that it meets formal requirements, it is communicated to the proprietor of the opposed application.
Filing of counterstatement
The proprietor is provided with a 2 month period during which they must file a counterstatement setting out their defence to the grounds of opposition. Sometimes the parties will agree a cooling-off period to provide additional time for negotiation to avoid further proceedings.
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 in support of their position; the proprietor is then set a deadline to file evidence in reply and typically the opponent has a further opportunity to file evidence strictly in response to the proprietors evidence. Sometimes the parties will agree a stay of proceedings while they negotiate a settlement.
If both parties have requested a decision "on the papers" then a decision will now be reached. However, frequently one or both parties will request a Hearing before a Hearing Office. There may be both a Case Management Hearing to determine further progress of the case and a separate Main Hearing.
Decision and Appeal
Thereafter the Hearing Officer will issue their decision, either allowing the application to proceed to registration, possibly after limitation, or refusing registration. Decisions are in writing and frequently include a costs order in favour of the successful party where there is one. Aggrieved parties have a deadline of 28 days within which they may file an Appeal.