How to challenge another individual’s trade mark application
In the UK, there are both legal and non-legal ways in which you can challenge someone's trade mark application.
You may have recently discovered an application for a trade mark that you feel will cause confusion between your existing business and/or brand but fear not! There are two ways in which you can object:
When a trade mark application passes the examination stage in the UKIPO, there is a two-month period in which other individual’s can oppose the application. This period can however be extended by a month by filing what is known as a ‘Notice of Threatened Opposition' form (TM7A). Filing a TM7A has no official fee but please note that if you wish to have legal experts make the filing on your behalf, additional fees may be payable.
Alternatively, if you wish to oppose the mark without an extension, you can file a 'Notice of Opposition' (TM7) form before the two month publication period ends. The TM7 notice will require you to include a list of grounds for the opposition to support the application. The UKIPO will then check if there is sufficient enough evidence for the opposition to proceed. Thereafter, the trade mark applicant will have two months from the date in which you file the TM7 to file a defence by return.
At this point, the applicant may withdraw their application completely or alternatively, both you and the applicant can opt for a nine-month 'cooling off' period to negotiate. As a last resort, the UKIPO will make an evidence-based decision on the outcome of the opposition whereby both you and the applicant can request to appeal the decision.
2.Third party observations
Once the UKIPO has published the application on the Trade Marks Journal, any individual can file for what is known as ‘third-party observations’ if you believe the application may have been accepted by error.
Filing a third party observation is not considered as 'legal action' however the UKIPO will make a evidenced based decision in accordance to the arguments filed.
If you wish to request an observation, you must list why you believe the UKIPO have accepted the application by erorr. For example, if you feel the proposed mark is descriptive of the nature of goods and services for which registration will be sought, you must list any relevant facts which evidence your points.
Be aware hoever that filing a third party observation does not guarantee that the application will be withdrawn and is solely at the discretion of the UKIPO.
If you want to challenge a trade mark application, it is always recommended that you contact the applicant first before undertaking either of the above steps. Doing so can potentially save both you and the applicant both time and costs in the long run. You can find details of the trade mark applicant on the UKIPO website under ‘owner details’ and contact them directly or get a legal expert to do this for you.
If you have any questions relating to this article contact the Trademarkroom today where we would be happy to assist you!