When to oppose a trade mark in the UK - and how to do it effectively

What is a trade mark opposition?

When someone applies to register a trade mark with the UK Intellectual Property Office (UKIPO), it is first examined by the UKIPO. Presuming it is accepted by the UKIPO, it is then published in the online trade marks journal for a two-month window. During this time, third parties can file an opposition, or they can file to extend this period by a further month.

When should you consider opposing?

You should consider filing an opposition if:
1.    The new mark is confusingly similar to one you have registered
If the applied-for trade mark is identical or similar to your registered trade mark - particularly if it covers the same or a similar class of goods or services - there is a risk it could mislead consumers and you should therefore consider opposing this application.

2.    The mark is identical or similar to your earlier trade mark which has a reputation / has accrued goodwill 
Even if you do not have your trade mark registered, but you have built up a reputation/goodwill within your mark - you should consider opposing this application.

3.    The mark is descriptive or lacks distinctiveness
You can also oppose a trade mark if you believe it is generic, descriptive, or otherwise does not meet the criteria for registration.

4.    You believe the application was made in bad faith
If you believe someone is applying to register a mark simply to block your business or to extract value unfairly, you should consider opposing the application.

How to oppose a trade mark in the UK

1. Monitor for new trade marks 
As oppositions must be filed within two months of publication, you must be quick to act. One option is to manually monitor the UK trade marks journal and keep an eye on similar applications being made in your sector. However, this can become tedious and is an imperfect system. We therefore strongly recommend putting a trade mark watching service in place with your trade mark attorney.

2. Consider negotiations 
Whether it be before or during the opposition process, it is often worth exploring negotiation and settlement options as legal disputes can be costly and time-consuming. An early agreement can save money and preserve relationships.

3. Opposing the application 
The next step is to either file a notice of threatened opposition (which extends the opposition period by 1 month), or to file a formal notice of opposition. The notice of threatened opposition also formally puts the other side on notice that an opposition is likely to follow, and can have a positive impact on any cost award later down the line. It is important to note that with the formal notice of opposition, you must clearly set out your legal basis and ‘adding to this’ is usually very difficult to do. It is therefore imperative that your formal opposition is done correctly.

4. Be prepared for what happens next 
Once an opposition is filed, the applicant must file a defence and counterstatement. Presuming a defence and counterstatement is filed by the applicant, both parties are able to submit evidence and submissions in support of their position.
Filing evidence and submissions can be burdensome from both a time and cost perspective. However, evidence and submissions can ‘make-or-break’ an opposition and should therefore be well considered and carefully drafted.
Once evidence rounds have concluded, both parties are able to request a hearing (should they believe one is necessary), or they can file written submissions in lieu of a hearing. Following all evidence, submissions, and hearings, the UKIPO will then issue a decision on the opposition.

Final thoughts
Trade mark oppositions are a vital tool in protecting your brand - but they need to be done strategically and carefully. If you act too late, or without solid legal grounds, you could miss your chance or risk a costly dispute.
Professional advice from a UK trade mark attorney will help you achieve the best outcome. Please therefore seek our advice as soon as possible if you have any further questions.