Trademark Oppositions Explained

Opposing a trademark isn’t as easy as it sounds. Often, trademark oppositions can be contentious and involve a lot more administration than you first imagined. It’s important to understand the kinds of oppositions and courses of action available to you before filing an official opposition. This blog will introduce you to trademark oppositions, how they work, and what legal processes are involved.

If you need legal support with your trademark application or want to oppose a trademark, get in touch with one of our dedicated trademark lawyers.

What is a trademark opposition?

A trademark opposition is where someone can oppose a proposed or already registered trademark. Oppositions can be launched for a number of reasons. For example, because the proposed mark conflicts with a pre-existing trademark, or because you feel that the mark in question should be free for anyone to use.

There are two points that one can oppose a trademark: pre-registration or post-registration. We will explore both types later in this article.

How to oppose a published trademark?

As we explored in our ‘How To Register A Trademark in the UK’ article, part of the trademark registration process is the advertisement of your application. This is where the Intellectual Property Office (IPO) publicises your trademark application in their on-line journal to ensure that anybody that may want to oppose it, can.

As outlined on the government website, there are 2 ways to oppose or object to a published trademark:

Third party observations (non-legal action)
Opposing a trademark (legal action)

Third party observations

Since third party observations don’t count as legal action, the IPO is not obliged to act on them. Third party observations are simply where you bring the IPO’s attention to any facts you feel that they have missed relevant to a specific trademark application.

Opposing a trademark

If you choose to take a legal course of action, this is known as ‘opposing a trademark’. Through this process, you can try to stop a mark that has been published in the on-line journal from becoming a registered trademark. It is possible to oppose the whole application or certain aspects of it.

Opposing under absolute or relative grounds

If you oppose on absolute grounds, this is because the application itself is defective. For example, the trademark may objectively be too generic or non-distinctive, and so you feel that it does not merit registration.

If there is a pre-existing trademark (or non-registered right) that conflicts with the proposed trademark, you can oppose on relative grounds.

The key difference is that anyone can, in theory, object on absolute grounds, but only someone who owns a relevant trademark or right can oppose a mark on relative grounds.

Step 1: File an opposition

Once the IPO publishes a trademark in its journal, this triggers a 2-month opposition period. If you file a ‘notice of threatened opposition’ this extends the period by a month. When you are absolutely sure you want to oppose the trademark, you will need to file a TM7 ‘Notice of Opposition’ and pay the relevant fees.

Step 2: Directly contact the applicant

Next, you will need to get in touch with the applicant in writing. You should explain why you are opposing their application. This counts as an opportunity to come to an agreement informally, rather than pursuing formal legal action, for example. And you may find that the application agrees to withdraw their application.

Step 3: Cooling off period

Once the applicant receives a notice of opposition, the two parties can enter what is called the ‘cooling off period’. You are required to agree the cooling-off period together and file a TM9C form.

The cooling off period lasts for 9 months, and is a time for the parties to try and resolve the dispute using alternative methods ahead of entering formal procedures. If you do not agree a cooling off period, then the opposition continues as normal.

How much does opposing a trademark cost?

Though you can get costs awarded during trademark opposition procedures, these are ‘contributory’ and not ‘compensatory’. That means that any money you are awarded (should you win) will only partly cover the costs of the proceedings. Further, there is a cap of £500 for any costs awarded in Fast Track Oppositions.

If you win your case, the defendant (the applicant) will have to pay your costs.

How to oppose a registered trademark?

If you want to oppose a trademark that has already been registered, the process is slightly different. There are a few avenues that you can go down – although you should always seek legal advice before initiating legal action.

Invalidation

Invalidation is a legal procedure which, if successful, would completely erase the trademark from the trademark register. It would be as if it never existed in the first place.

Revocation

Revocation is the path you would take if you want to try and remove a trademark from the register because it is not actively in use, it has become ‘generic’, or because you feel it is misleading.

Rectification

Rectification is, as the name suggests, appropriate where you want to correct a mistake or omission you feel has been made in a registered trademark.

Intervention

Intervention is where somebody who is not legally associated with a registered trademark can apply to become ‘involved’.

Where to find legal advice about trademark oppositions

If you’re thinking about opposing a published or registered trademark, it’s best to seek legal advice before launching the procedures. A specialist IPO lawyer will be able to offer you strategic support and advice tailored to your specific situation. They will also be able to undertake much of the bureaucratic administration involved to ensure that your opposition is as strong as possible.

Get in touch to find out how our dedicated trademark lawyers can help you in your claim.

How do Trademark Oppositions Work?