Once a trade mark has passed the examination stage, it is then published in the weekly trade mark journal for a period of two months to allow any potential opposition.
This period may be extended by a further month with a “Notice of Threatened Opposition TM7A”form to allow the potential opposer further time, although does not commit the potentially opposer to the opposition. Within two month period the trade mark applicant has to respond to the opposition, both parties may agree to a cooling off period for 9 months, which may then be extended for a further 9 months, which can be ended by either party early.
If there has been no cooling off period, or no amicable solution, the applicant must respond to the opponents opposition with a counter statement within 2 months. This is a preliminary process with no evidence needed at this stage, and is more of a rebuttal of the opposition. Going forward, both parties provide evidence and counter evidence, with the deadline for the response set by the UK IPO, which is usually within a 2 month period. Once all evidence has been submitted, either party may submit final written legal arguments, or request a physical hearing. The UKIPO will usually make its final decision within 6-8 weeks, where the UKIPO will award a set sliding scale of costs to the successful party which is intended as more of a contribution to the opposition costs, rather than compensating for the full cost.
Appeals may be made either to the high court, and further up the legal system to the court of appeal etc, or via an “Appointed Person” such as an experienced Trade Mark Attorney.
Grounds of Opposition
A opposition may be based upon the fact that the trade mark should have not been approved in the first. For example, the mark is descriptive, not distinctive, or contravenes public morality. Anyone may make an opposition based on this method
A trade mark may be appealed on relative grounds by existing trade mark holders. The main reasons being may be that it would cause likelihood of confusion by the public between the prospective mark and an earlier registration, or would amount to passing off.
How would you become informed about a potential similar mark you should oppose?
If the UKIPO deems the mark to be similar, then they will contact the holder of the application, and invite them to make their opposition. Alternatively, BKIP offers a watching service, which can monitor a variety of countries trade mark databases, and commerce websites, to inform you of any applications, or similar use.