This guide is based on UK law. It was last updated in July 2018.
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 from the date of publication of the application on request by the potential opponent, by filing the so-called 'Notice of Threatened Opposition'. The Notice does not commit the opponent to opposing the application and opens an opportunity for the parties to engage with a view of finding an amicable settlement before a formal opposition is filed.
Grounds of opposition
Trade mark oppositions can be filed both on the basis of absolute grounds, for example 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, for example the trade mark is identical or confusingly similar to an existing registered mark or conflicts with existing prior common law rights established under the tort of passing-off. However, only the owner of 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.
Before the UK IPO, parties can agree to enter into a ‘cooling-off period’ to negotiate a resolution to the dispute. The mutually agreed request must be filed within the two months allowed for an applicant to file a defence. The cooling-off period lasts for an initial period of nine months; however the parties can request an extension of further nine months.
Filing a defence
The applicant has, unless the parties enter into a cooling-off period, a non-extendible of two months to file a formal notice of defence and counterstatement. The defence 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.
Once the Notice of Defence has been submitted, the UK IPO will specify the deadlines for filing evidence and submissions by the parties. Unless the opponent has been required to show use of his earlier trade mark, it is not required to file evidence. However, certain matters, such as the existence of a passing-off claim, cannot be proved without evidence.
Evidence is normally given in the form of a witness statement, i.e. a legal document setting out the facts of the case. The information provided must be based on the witness’ own personal knowledge; it should stick to the facts that relate to the grounds for opposition and should not be used to present legal arguments or the opinions of the parties. Legal arguments may be made in submissions by the parties.
In relatively rare circumstances, the witness can be ordered to be cross-examined in an oral hearing.
Where the opponent has been requested to prove use of his mark, the evidence must show that the earlier mark has been put to genuine use in relation to the goods and services for which it is registered, during the 5 years leading up to the date when the application for the mark opposed was published. The evidence should demonstrate, for example:
- for which goods or services the trade mark has been used
- the financial turnover from sales of these goods or services under the trade mark during the five year period
- if possible, examples of sales records showing the mark in use for the goods/services for which use is claimed e.g. copies of sales invoices or similar sales records
- how the goods/services have been advertised under the trade mark, if possible with examples of such advertising from the relevant period
- the period of time during which the trade mark has been used and the geographical area in which it has been used
- how the trade mark is used in relation to the goods/services e.g. on labels, signs, invoices, advertising materials etc
Hearing / written submissions
Once the periods for filing evidence or submissions are complete, the parties will be invited to file final submissions (legal arguments) in support of their position, or to request a hearing where oral arguments are put forward in support of each party’s position based on the pleadings and evidence filed. It remains open to either party to request a hearing. Even when a hearing takes place on request of one party, the other party can still decide to simply file written submission in lieu of the hearing.
The opposition decision is usually issued around six to eight weeks from the hearing or from the close of proceedings respectively. The successful party will be awarded cost, but the decision usually follows a predetermined scale and is therefore unlikely to cover the actual cost of the dispute.
The opposition decision is open to appeal in two ways. The first avenue of appeal is to the so-called Appointed Person who is an experienced trade mark practitioner appointed to hear the appeals from the UK IPO. The decision of the Appointed Person is not open to a further appeal. The second avenue of appeal is to the High Court, where decisions can be appealed to the Court of Appeal and beyond.
Length of proceedings
Assuming the opposition proceeds to a final decision in ‘normal’ circumstances, the proceedings before the UK IPO take around eight to 12 months to get to an initial decision.
Pinsent Masons’ trade mark team has significant experience in conducting opposition proceedings in the UK. We represent clients as an advocate before the UK IPO Tribunal and the Appointed Person. Should you have any questions, please do not hesitate to get in touch with the team.