A Guide to the UK Trade Mark Opposition System

The UK Opposition Process in Full and What You Need to Consider Before You Oppose an Application (or Defend One)

Registering a trade mark in the United Kingdom is essential if you want to properly protect the identity and reputation of your brand. However, obtaining a trade mark registration is not always straightforward and there are pitfalls to try and avoid. Understanding the UK trade mark opposition system is critical, both for applicants wanting to register a mark and for rights holders who may want to stop a mark mark from registering. 

This guide outlines the UK opposition process from start to finish, covering the key stages, procedural requirements, strategic considerations and available legal remedies.

It is written for anyone who needs a practical understanding of what to expect if their application for registration has been opposed, or if they wish to challenge a competitor’s application and stop it from registering.

What is a trade mark opposition?

A trade mark opposition is a formal objection to the registration of a trade mark.

The opposition is lodged by an interested party (usually this will be the holder of one or more earlier rights) who believes that the contested trade mark application conflicts with their earlier right or rights, or otherwise that the application fails to meet the requirements for registration under UK law.

Oppositions may be filed against UK national applications or against international registrations that designate the UK under the Madrid Protocol.

The opposition ‘window’

Once a trade mark application is formally accepted by the UK Intellectual Property Office (UKIPO) for registration (i.e. that the mark is capable of registration and is both distinctive and non-descriptive of the goods and services) it is published in the UK Trade Marks Journal.

From the date of publication, a two-month period begins during which any party may lodge their opposition to an application.

This initial two-month window may be extended by a further month (to a total of three months) by filing a Notice of Threatened Opposition (official Form TM7a).

Serving a Notice of Threatened Opposition does not oblige an interested party to proceed with a full opposition if they later choose not to do so, but it preserves their right to oppose by extending the timeline.

Often, the filing of a Form TM7A can be a good tactic because once submitted the trade mark applicant will be notified of the threat and will know who is threatening to oppose them.

This can often trigger direct communication between the parties and lead to an opportunity for resolving a dispute before formal proceedings take over.

Grounds for opposition

UK law provides for two primary categories of opposition: absolute grounds and relative grounds.

These are not mutually-exclusive.

Absolute Grounds refer to legal objections based on the intrinsic characteristics of the mark at issue.

The most common grounds under this section are that the mark:

• Lacks any distinctive character;
• Inherently describes the goods or services that are being sought for registration;
• Is a generic term used in every day language, or is a term used customarily in the particular trade;
• Is deceptive, offensive or contrary to public policy;
• Consists exclusively of a shape or other feature necessary to achieve a technical result (e.g. it is nothing other than a simple shape of a bottle);
• Includes a specially-protected emblem or flag but without appropriate consent to do so;
• Has been applied for registration on ‘bad faith’.

Any person may oppose an application on absolute grounds.

Relative Grounds are based on an opponent’s prior rights. These include:

• An earlier UK application or registration (or international trade mark registration) for an identical or similar mark covering the same or similar goods or services, where a likelihood of confusion would exist;
• As above, but where use of the mark without due cause would damage the reputation of the opponent’s mark (the goods or services would not need to be similar);
• Common law rights accrued through use of an unregistered mark in the UK;
• Well-known marks protected under the Paris Convention;

Only the registered proprietor of an earlier right may oppose on the basis of relative grounds.

Initiating opposition proceedings

To formally oppose a trade mark application, the opponent must file a Notice of Opposition & Statement of Grounds (official Form TM7) and pay the applicable fee.

The notice must include:

• The name and address of the opponent;
• The trade mark(s) being relied upon (if any);
• The grounds of opposition;
• Where applicable, details of the earlier use of the mark (especially for passing off claims);
• Where an opponent relies on earlier right which is over five years old, an indication that the mark has been put to use, or not

It is important that the grounds are carefully selected because they would need to be factually supported later.

Additional grounds may sometimes be added to an opposition later in the proceedings, but this would need very good reason and acceptance of a request would be at the discretion of the UKIPO.

In essence, an opponent should endeavour to make its best case from the outset. It is far easier to drop opposition grounds later than it is to add them.

After the opposition is filed

On receipt of an opposition, the UKIPO reviews it for formal compliance.

If accepted, the applicant is duly notified and is set a two-month deadline to file a ‘Defence and Counterstatement’ using official Form TM8.

However, before a counterstatement needs to be filed, both parties may agree to enter an extended cooling-off period if there is any willingness to settle the matter.

Extending the initial period provides a first cooling-off period totalling nine months. This can be extended again by a further nine months prior to its expiry, providing a generous amount of time for the parties to negotiate a potential settlement.

If settlement talks collapse, either party may end the cooling-off early by giving written notice to the UKIPO.

This would then trigger the adversarial rounds of the opposition.

Cooling-off periods are used by parties to try and work out coexistence, facilitated by consent of a mark on the register (and usually its underlying use in the marketplace) subject to conditions being agreed upon.

Where successful these negotiations can resolve a dispute efficiently and cost-effectively, allowing an opposition to be withdrawn in the early stages.

Filing the opposition defence

Settlement and coexistence is not always possible or desired by one or both or the parties.

In those instances, an applicant must submit its Defence and Counterstatement in order to formally defend its position.

The counterstatement should:

• Address all allegations raised in the Notice of Opposition;
• Admit or deny each claim;
• State whether the applicant requires proof of use of the opponent’s earlier right(s) relied upon (if applicable);
• Set out any factual context or defence (though evidence is not required at this stage).

Failure to respond by the deadline would result in the application being treated as abandoned unless exceptional circumstances can be shown as to why the deadline was missed.

The evidence rounds

Once the defence is filed, the UKIPO sets a timetable for evidence.

The process typically includes up to three rounds:

• Opponent’s ‘Evidence-in-Chief’ (2 months): The opponent is required to submit factual evidence to support its case. If proof of use of an earlier right that is over five years old has been requested, the opponent must provide full evidence showing commercial use of the mark in the UK during the relevant five-year period. This period is calculated as being the five-year period prior to the filing (or priority) date of the opposed mark.
• Applicant’s ‘Evidence-in-Reply’ (2 months): The applicant may submit evidence countering the opponent’s evidence in support of the opposition and may also rebut the proof of use evidence, if applicable to the case. The applicant’s reply is optional but usually recommended. It should respond directly to the points raised by the opponent’s evidence and not stray too far from this.
• Opponent’s ‘Rebuttal’ (1 month): If the applicant files reply evidence, the opponent may then be given one month to request the option (and if so, one additional month to file) further evidence in response.

All written evidence must be provided in the form of witness statements following a strict legal standard.

The UKIPO imposes a default 300 page limit for evidence, although where merited, permission can be granted for evidence volumes in excess of this.

Final submissions and hearing

At the conclusion of the evidence rounds, the parties are given two options:

• Request an oral hearing: nowadays, hearings are held online. They provide an opportunity for parties to present legal arguments and clarify points from the evidence. Hearing officers will often ask a series of questions during a hearing in order to better understand the nuances of the case and to challenge some of the parties’ assertions. It is not essential that both parties attend a hearing.
• Submit final written arguments: instead of attending a hearing, either party can file a written summary of their case for the Hearing Officer to take into account ahead of a decision.

Following the hearing (or receipt of any final written submissions), the appointed hearing officer will then thoroughly review the case file.

This will include a review of all the evidence and submissions filed by the parties with reference to established case law.

Following the review, the hearing officer will issue a written decision.

At the time of writing, decisions are issued not less than six months following hearings or written submissions in lieu of them.

Decision and costs

The UKIPO decision confirms whether an opposition is upheld or rejected.

The outcome may result in:

• The full refusal of the application;
• A partial refusal of the application (e.g., refusal for certain goods or services, but not for others);
• Rejection of the opposition and approval of the application.

The decision will usually include a cost award to the successful party.

In order to calculate the level of costs awarded to a successful party, the UKIPO will quote from a published scale of costs.

This scale is intended to keep proceedings ‘proportionate’ although it is important to keep in mind that the level of costs rarely reflect the amount a party may have had to spend.

In some instances a party may request costs on an ‘off the scale’ basis if the proceedings have merited it (for example, if one of the parties has behaved unreasonably) but the ultimate discretion lies with the hearing officer.

Appeals

The unsuccessful party may appeal within 28 days of the issue date of the written decision.

There are two routes for appeal:

• The Appointed Person: This is a specialist person with expertise in trade mark law. An Appointed Person appeal is final and no further appeal is permitted beyond this route.
• The High Court: A more formal appeal route, typically used in complex or high-value cases. Decisions of the High Court may be appealed to the Court of Appeal and then to the Supreme Court, if applicable.

Each route carries different cost and procedural implications, but the Appointed Person appeal route is by far the cheaper option.

The most appropriate path should be chosen carefully by the party wishing to appeal and various factors will come into play when deciding. More often than not, it will come down to cost.

Multiple proceedings and case management

Where several oppositions or invalidity actions involve the same parties or overlapping marks, the UKIPO will usually take it upon themselves to consolidate these cases into a single action.

This is intended to streamline the process by avoiding a level of duplication, thereby reducing time and costs for all concerned.

In recent years, the UKIPO has shown an increasing willingness and tendency to consolidate proceedings, although it must be said this can sometimes be at the slight disadvantage of one of the parties.

The UKIPO has discretion (and often uses it) to call parties to Case Management Conferences to resolve procedural disputes, clarify evidence requirements or to rule on requests for time extensions.

These are akin to ‘mini’ hearings intended to iron out smaller issues that crop up during the course of the proceedings.

Extensions or suspensions of deadlines may be granted with good reason, but are not automatic.

Practical tips for applicants and opponents

Working with the expertise of a chartered trade mark attorney is invaluable in these circumstances.

Parties that choose to go it alone often struggle and spend inordinate amounts of time on the routine formalities.

Naivety can also lead to a situation where they play into the hands of their adversaries.

Indeed, we would go so far as to say that not having an expert advisor on hand can sometimes mean an applicant or opponent is more likely to snatch defeat from the jaws of victory – particularly if the party on the other side are represented and have a good trade mark attorney working for them.

The best tips we can give are:

For applicants:

• Always conduct a thorough trade mark clearance search before filing a trade mark application (always!);
• If you receive an opposition, act promptly and seek legal advice from a chartered trade mark attorney (regulated to practice under IPReg);
• Consider the use of cooling-off periods to avoid any further escalation;
• Never agree to settle for the sake of it. Sometimes the withdrawal of an application is far preferable than entering into an agreement that would tie your business up in knots forever.

For opponents:

• Always monitor the Trade Marks Journal for potentially conflicting marks (put a trade mark watch in place);
• File a Notice of Threatened Opposition to buy time;
• Ensure your older marks have been used in the UK within the relevant timeframe and prepare to provide evidence if necessary, especially if your opposition will involve use-based claims;
• To save cost and time, consider contacting the applicant before a deadline to file an opposition and invite them to withdraw their application

For both parties:

• Use evidence strategically, not excessively.
• Be open to early settlement discussions.
• Respect procedural deadlines. Extensions are not always granted.
• Understand the scope and limits of UKIPO cost awards. You may be successful in the end, but you could still be out of pocket.

Overall

The UK trade mark opposition process is a vital mechanism for resolving disputes prior to a mark achieving registration.

The system is accessible and relatively cost-efficient because it is conducted through the administrative UKIPO and not through a court, although it is nonetheless a formal legal process governed by strict rules.

Success often depends on prompt and strategic action, proper preparation of evidence and effective negotiation wherever appropriate.

If you are filing a trade mark application or seeking to oppose one, talking the matter through with a chartered trade mark attorney and then engaging their services can make all the difference between a successful registration (or attack) and a costly setback.

Stevens Hewlett & Perkins regularly handle UK trade mark oppositions for our clients and over the course of time we have seen it all.

We have had many great successes and in some situations we have turned what have looked like hopeless cases from the start into big triumphs for clients.

We understand what it takes and how to strategically manage opposition cases.

If you are facing a potential trade mark opposition or need to stop a conflicting mark from registering then contact our trade mark team today for an initial assessment.