Trade mark opposition and IPO actions
What is a UKIPO trade mark opposition? A trade mark opposition is a formal tribunal proceeding before the UK Intellectual Property Office (UKIPO) where a third party challenges a published trade mark application within a two-month window (extendable to three months) on absolute grounds (Section 3) or relative prior-rights grounds (Section 5).
Filing a trade mark application is only the first step in securing exclusivity around a brand sign. The UK Intellectual Property Office (UKIPO), as with many other IPOs, operates a public register. This means that when an application is made, it becomes open to scrutiny and challenge.
Trade mark registrations can be challenged on both absolute (can the desired registration legally function as a trade mark?) and relative (does the trade mark infringe on any existing trade marks in the register?) grounds.
Each type of challenge offers various approaches that can be taken; the likelihood of success is determined by your unique set of circumstances and the experience and expertise our team brings to that specific context.
Whether you’re looking to protect your brand landscape, or you have received notification of threatened opposition, invalidation or revocation, it is critical that brand owners are able to effectively navigate the avenues open to them by the IPO.
When a competitor encroaches on your brand by adopting a confusingly similar name, logo, or get-up, they actively siphon that equity and damage your market share.
Our team engage with trade mark opposition, revocation and invalidation (both as it relates to UK registered trade marks, and through our overseas partners, elsewhere) for our clients.
Find out more about how we can assert or defend your brand through engagement with the IPO below.
The trade mark challenge procedure: A brief timeline
As above, once a trade mark registration has been made and is accepted on absolute grounds by the trade mark examiner at the IPO, it is published in the trade marks journal, which allows existing trade mark owners to oppose the registration for a set period of time before it is registered.
It is the responsibility of trade mark owners to monitor the trade mark register; however, many will have watching services in place which will flag up trade mark registrations which are seen to encroach on their trade mark’s distinctiveness.
It is then the decision of the trade mark owner, in conjunction with advice from their legal team, as to whether the prospective trade mark should be opposed or not.
Stage 1: Notice of threatened opposition
The first stage of an opposition procedure is a notice of threatened opposition. This is typically seen as a tactical warning shot, not formally opposing the trade mark yet, but alerting the registrant that this will occur without either withdrawing the application or amending it. The party opposing the trade mark will typically provide an outline or opportunity for negotiations which may result in commercial co-existence, or an amended trade mark specification that avoids overlap. This extends the opposition deadline by a month, but provides the opportunity for negotiations without incurring the full opposition fee.
Stage 2: Formal opposition
If no settlement between the parties is reached in the prior stage, the opponent files the formal pleadings to the IPO detailing their legal grounds for opposition to the proposed registration.
This is typically based on relative grounds in relation to their existing trade mark – claiming that the proposed mark is identical or confusingly similar to their existing earlier trade mark, or unregistered rights.
It is less likely to include a challenge on absolute grounds, as this is typically assessed by the IPO prior to the publication of the trade mark in the trade mark journal.
Stage 3: Defence against trade mark opposition
If a resolution has not been reached and a formal opposition has been received, the trade mark application will then have exactly 2 months to file its defence to its trade mark registration. Note that if this deadline is missed, the trade mark application is automatically deemed abandoned by the IPO. Instructing specialist legal support is critical to make sure that this defence is asserted as strongly and as precisely as possible. Following this, both sides will file written evidence and legal submissions. Most disputes are decided “on the papers” rather than via an in-person oral hearing.
Unlike trade mark infringement claims and other Court-based IP proceedings, trade mark opposition proceedings follow a fairly predictable scope and structure.
Crucially, a nuanced and in-depth understanding of the following is important to maximise chances of success – in either opposing or defending a trade mark registration:
- A critical awareness of any weaknesses that the proposed trade mark may have on absolute grounds.
- A precise view on the specific strength and scope of both the proposed trade mark and the mark(s) upon which the opposition is being founded.
- An understanding of the trade mark specification, any potential concessions that can be made, and commercial “red lines” that cannot be crossed.
- The status of commercial “use” of the mark in question, and whether a non-use argument can be brought.
Trade mark opposition proceedings (as with all IP proceedings) if mismanaged or detail overlooked can have significant commercial implications.
As such, it is important to be sure that you have instructed a legal team who are experienced and able to deploy their experience to assert your interests effectively.
If you have received or are seeking to issue a trade mark opposition, and are seeking expert support with the same, do not hesitate to get in contact with our specialist team.
Absolute (battle)grounds
The second kind of IPO based trade mark dispute that we support clients with is related to absolute grounds – and in essence whether trade marks either being sought to be registered, or which are already registered can be challenged for their validity.
This is less commonplace than challenges on relative grounds. This is because trade marks are examined for their validity on absolute grounds by the examiner before they are published in the trade mark journal in the first instance.
Exploring trade marks’ weakness on absolute grounds provides the opportunity for invalidation and revocation – in certain circumstances.
This is something that we have experience in supporting our clients with, in circumstances where it is critical to their brand landscape, or, in certain scenarios, in response to a threat they have received related to one of their trade marks (or trade mark applications).
Some of the criteria through which a trade mark may be challenged on absolute grounds are below. Note that the prospects of success around these avenues of enquiry are highly dependent on the legal nuance and specific attributes of the trade mark registration in question.
- Lack of distinctive character
The purpose of a trade mark is to be distinct and act as a designation of origin for the goods or services it is affixed to. If it cannot do this, it may be subject to revocation. - Descriptive signs
Trade marks are monopoly rights over signs. As a result, descriptive terms for goods and services cannot be registered as they would restrict others from simply describing their goods and services. - Customary or generic terms
Certain goods and services have specific terms that have become generic in relation to them. Similar to descriptive signs, restricting others from being able to use these terms means that they cannot be registered. - Bad faith
Bad faith applications are applications that are made with no genuine intention to use the trade mark in the course of trade, but rather to hinder others using it (i.e. “trade mark squatting”, or when proven to be done to damage other businesses). - Public policy or morality
The IPO may invalidate a trade mark registration on moral grounds – if it is seen to be offensive or disruptive to the public. - Deceptive marks
Marks which deceive the public as to the nature of the goods and services they brand may be invalidated. This can relate to their nature, quality or geographical origin (i.e. suggesting that they originate from elsewhere). - Prohibited emblems or flags
Royal arms, flags, international organisation emblems (e.g. the Olympics logo) and hall marks cannot be registered as a trade mark. - Shape restrictions (as it relates to shape marks, in particular)
Shape trade marks cannot be registered on absolute grounds if the sign consists exclusively of a shape that results from the nature of the goods themselves, or is necessary to obtain a technical result, or gives substantial value to the goods. (Note: in the latter two instances, these may be protected via a registered patent and registered design right, respectively).
Strategic commercial resolution
When in the cut and thrust of a trade mark opposition or cancellation, there are several instances where negotiation and resolution are possible. As such, the above avenues of enquiry are often a means to bring parties around the negotiating table to seek a mutually beneficial or leveraged solution.
Cooling off
Once a trade mark defence has been filed, the parties can jointly request a “cooling off” period. This pauses the litigation timetable for up to 9 months (extendable to 18). Entering this period halts the directly adversarial process and allows us to help you explore commercial settlements under the protection of “without prejudice” communications
Co-existence
It is typical that around the negotiating table, a co-existence arrangement can be made. If both parties have legitimate commercial interests but their marks conflict, this is often the most cost-effective arrangement. Instead of engaging in an ongoing dispute, the parties sign a binding commercial contract that allows both trade marks to exist on the register, under strictly defined territorial, visual or product-specific parameters. In rare cases, co-existence discussions could lead to genuine cooperation and collaboration between companies.
Or… enforcement
Failing the achievement of a commercial resolution after all best efforts, the litigation process may continue – with our team seeking to robustly support your trade mark, whilst probing for opponent weakness and, where possible, dismantling their claim.
Trade mark opposition: Frequently asked questions
Unlike commercial litigation in the High Court, costs in the UKIPO tribunal are based on a published “scale of costs”. This means that the winning party only recovers a small contribution towards their actual legal fees (typically between £1,500 and £3,500 for a standard opposition). This makes early commercial settlement highly attractive for both sides.
It is recommended that you do not withdraw immediately without a specialist review. It can be the case that a notice of threatened opposition is sent to test the waters, and even provoke an immediate withdrawal without needing to assert rights. Instruct a specialist legal team to immediately assess the merits of the threat; as above, there may be a number of challenges that can be made to assert your position.
Facing an opposition, or looking to challenge a registration?
Registry disputes require swift tactical decision-making to avoid abandoned applications or runaway costs. Early intervention is critical to maintaining your commercial leverage.
Contact our specialist brand protection team to assess your position and scope a robust tribunal strategy.
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