Opposition filed against application: what can I do?

Posted by Jane on September 17, 2018 / Posted in Trade Marks
Submitting an application to register a trade mark, is largely a waiting game.

Submitting an application to register a trade mark, is largely a waiting game.

Not only are you waiting for the UK Intellectual Property Office’s verdict on the registrability of your mark, you are also in anticipation of any oppositions being filed.

An opposition can be filed by any party who has an existing registered trade mark that may be interfered with by your application. The owner of any existing mark that has been registered in the UK and is deemed to be similar or identical to your application will be notified by the UK IPO of your application and will have the opportunity to submit an opposition.

This opposition will state that they believe the application will conflict with their registered mark and could have the potential of infringement. The basis of the objection is that the mark in the application is substantially similar or identical to their already registered mark. This would be enough to prevent your application being successful and your mark being registered.

Many applications go through registration without any oppositions being filed, especially if a full search has been done before the application was submitted, however they are possible and there are a number of steps you can take.

Firstly, you can withdraw your application. This is your last resort as it will see the end of your trade mark bid but may be inevitable if your proposed mark is identical to an existing one in the same class of goods or services.

You can also amend your mark’s goods or services classes. You cannot amend the mark itself without having to submit a new application but it may be worth negotiating with the other party regarding the classes of goods or services and either stating that you will only sell or supply goods or services in a specific class/es or state you will avoid certain classes. This may be enough to satisfy the other party and therefore will allow your application to move forward.

If both you and the other side are willing to negotiate, you can apply for a 9-month ‘cooling off’ period in which you are free to negotiate a solution. This can be extended up to 18 months. By negotiating with the other party directly and trying to come to a solution through negotiations, you can reduce your costs and prevent any issues later on.

However, if this is not possible or you feel the opposition is unfounded, you can file a defence or a counterstatement. This must be done within two months of the notification of an opposition being filed, unless you have exercised the ‘cooling off’ period. In this defence, you need to state why you believe your application does not conflict with the mark owned by the opposition filer. In addition, you can ask the opposition filer to give evidence that they have proper use of their mark. This is available if that mark has been registered for more than five years. They will need to show that they have genuine use in the classes for which it has been registered and for which they are opposing your application.  After you have submitted a defence, the other party has a chance to submit evidence against your defence. A Hearing Officer will then consider the application and make a decision. If either party wishes to appeal this decision, it can be done either to the court or to an appointed person who are selected by the Lord Chancellor to hear the appeals.

If you have any questions, please get in touch with The Trademarkroom team today.

By Ellis Sweetenham

Jane Coyle
This entry was posted on September 17, 2018 and is filed under Trade Marks. You can follow our blog through the RSS 2.0 feed.

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