This guide is based on UK law. It was last updated in May 2009.
Opposing a trade mark application
Most trade mark filing application systems across the globe incorporate some form of opposition procedure, so that third parties can file their opposition to a grant of a trade mark application.
This is a brief summary of the procedures for opposing trade mark applications in the UK and through the Community Trade Mark Office.
Trade mark applications in the UK and through the Community Trade Mark system, once accepted by the relevant trade mark office, are open to opposition by third parties.
In the UK, a trade mark application is automatically open to opposition for two months, although the opposition period can be extended by a further one month to three months from the date of advertisement of the application on application by the potential opponent.
Community trade mark applications are automatically open to opposition for a fixed three-month period following the date of advertisement of the application. The opposition periods in both the UK and through the Community Trade Mark system are unextenable beyond the three month period.
To file a trade mark opposition in both the UK and through the Community Trade Mark system, the Opponent must file a statement of grounds and pay an official opposition fee. The statement of grounds simply details the grounds upon which the opposition is based and is akin to pleadings in court proceedings. It is not necessary at this stage of the proceedings to file any evidence in support of the opposition.
Grounds of opposition
In the UK, trade mark oppositions can be filed both on the basis of absolute grounds, e.g. the trade mark concerned is descriptive and non-distinctive and should be free for all traders to use; or on the basis of relative grounds, e.g. the trade mark is confusing similar to an existing registered mark or conflicts with existing prior common law rights established under the tort of passing. However, only the owner any prior relative rights can file an opposition in the UK based on those relative rights. Anybody can file an opposition based on absolute grounds.
Through the Community Trade Mark system, a trade mark opposition can only be filed on the basis of relative grounds and once again only the owner of any relative rights can file the opposition.
Filing a defence
The applicant has two months to file a counter-statement to an opposition filed before the UK's Intellectual Property Office (IPO). The counter-statement usually consists of a number of simple denials of the notice of opposition. At this stage no evidence need be submitted in support of the defence of the opposition and no official fee is payable on filing the counter-statement.
In the UK, if the notice of opposition is based on relative grounds which cite prior filed trade mark applications or registrations, the IPO will give a ‘preliminary indication’ on the strength of each parties position. The ‘losing party’ in any preliminary decision will then have to decide whether to continue with the opposition or the defence of the opposition. The opponent may request the issuance of a preliminary indication at the time the opposition filed, and the applicant at the time of filing the counter-statement. However, the UKIPO has discretion as to whether a preliminary indication is issued and may still issue one even when not requested by either party to the proceedings.
Before the Community Trade Mark Office (‘OHIM’), the defendant will have six months from the date of the admission of the notice of opposition to file arguments, facts and evidence in support of their application.
Before the IPO the parties to the opposition can agree to enter into a so-called 'cooling-off period' which is designed to give the parties time to settle the opposition amicably. The cooling-off period must be applied for with the consent of both parties before the expiry of the deadline to file the counter-statement. The cooling-off period can last up to a maximum of 18 months and effectively stays the progress of the opposition procedure.
Before OHIM, there is an automatic two-month cooling-off period following the official admission of the notice of opposition, which can be extended for a further fixed 22 month period with the consent of both parties. If the opposition is settled amicably between the parties before OHIM during the cooling-off period, the Opponent obtains a refund of the official opposition fee. If the cooling-off period is extended to the deadline for filing a defence to the opposition is correspondingly extended.
Before the IPO, assuming the opposition continues after the possible issuance of a preliminary indication, the opponent has three months to file their evidence in chief in support of the opposition. If the opponent files no evidence the opposition is deemed withdrawn. The applicant then has three months to file their own evidence in support of the grant of the application. The Opponent then has a further three month period to file evidence strictly in reply. The periods for filing evidence are extendable.
Before OHIM, the opponent has four months to file their arguments, facts and evidence in support of the opposition following its official admission. The applicant then has two months following that date (six months from the day of filing the opposition) to file their arguments, facts and evidence in support of the application. The opponent will then generally be given two months to file observations in reply, and the applicant may be given a further two months to file further observations.
Proof of use
It is important to note that in both opposition proceedings before both the IPO and OHIM, that the applicant may in relation to any trade mark registrations upon which an opposition is based, which have been on the register for over five years before the date of advertisement of the opposed application, request proof the mark concerned is still in use. If the mark is not is use in relation to any of the goods or services covered by the registration upon which the opposition is based then that ground of opposition will be automatically rejected. If the mark has been used in relation to a limited range of goods and services, the coverage of the registration upon which the opposition is based will accordingly be restricted. Thus, it is crucial that before the opposition is filed, that the party opposing a trade mark application is sure that the mark has been used in the last five years.
Before the IPO, a decision can be made on the basis of the papers as filed, where each party will be given the opportunity to file written arguments in support of their position. Alternatively, an oral hearing can take place, usually involving Counsel, where oral arguments are put forward in support of each party’s position based on the pleadings and evidence filed.
Before OHIM, opposition decisions are only taken on the basis of the papers as filed.
The successful party in both IPO and OHIM opposition proceedings can apply for an award of costs.
IPO opposition decisions are open to appeal in two ways. The first avenue of appeal is to the Appointed Person. However, the decision of the Appointed Person is not open to appeal. The second avenue of appeal is to the High Court, where decisions can be appealed to the Court of Appeal and beyond.
OHIM opposition decisions are open to appeal to the Boards of Appeal and then on to the Court of First Instance and the European Court of Justice.
How long to the proceedings normally last?
Assuming the proceedings proceed to a final decision, then both IPO and OHIM opposition proceedings take around two years to get to an initial decision.
How Pinsent Masons can help
Our trade marks and designs team consist of qualified trade mark attorneys who have extensive experience of filing trade mark oppositions and defending them. We can provide an expert and cost effective service to meet your needs.
See also: OUT-LAW's legal info about trade marks