Opposition against a UK trade mark application

This brief summary explains the procedures for opposing trade mark applications in the UK and for defending an opposition. The proceedings are the same for national UK filings as well as for international registrations designated to the UK.

Opposition period

In the UK, a trade mark application is automatically open to opposition for two months, although the opposition period can be extended by a further one month from the date of publication of the application on request by the potential opponent, by filing the so-called 'Notice of Threatened Opposition'. The notice does not commit the opponent to opposing the application and opens an opportunity for the parties to engage with a view of finding an amicable settlement before a formal opposition is filed.

Grounds of opposition

Trade mark oppositions can be filed both on the basis of absolute grounds, for example the trade mark concerned is descriptive and non-distinctive and should be free for all traders to use; or on the basis of relative grounds, for example the trade mark is identical or confusingly similar to an existing registered mark or conflicts with existing prior common law rights established under the tort of passing-off. However, only the owner of any prior relative rights can file an opposition in the UK based on those relative rights. Anybody can file an opposition based on absolute grounds.

Cooling-off periods

Before the UK IPO, parties can agree to enter into a ‘cooling-off period’ to negotiate a resolution to the dispute. The mutually agreed request must be filed within the two months allowed for an applicant to file a defence after the opposition has been filed and held to be admissible. The cooling-off period lasts for an initial period of nine months, but both parties can request a joint extension of a further nine months.

Filing a defence

Unless the parties enter into a cooling-off period, the applicant has a non-extendible deadline of two months to file a formal notice of defence and counterstatement. The defence usually consists of a number of simple denials of, or admissions to, the notice of opposition. At this stage no evidence needs to be submitted in support of the defence of the opposition.

Evidence

Once the Notice of Defence has been submitted, the UK IPO will specify the deadlines for filing evidence and submissions by the parties. Unless the opponent has been required to show use of his earlier trade mark - which is only applicable if the right relied on is over five years old, see below - it is not required to file evidence. However, certain matters, such as the existence of a passing-off claim, cannot be proved without evidence.

Evidence is normally given in the form of a witness statement, which is a legal document setting out the facts of the case. The information provided must be based on the witness’ own personal knowledge; it should stick to the facts that relate to the grounds for opposition and should not be used to present legal arguments or the opinions of the parties. Legal arguments may be made in submissions by the parties.

In relatively rare circumstances, the witness can be ordered to be cross-examined in an oral hearing.

Proving earlier use of a trade mark

Where the opponent has been requested to prove use of their mark, the evidence must show that the earlier mark has been put to genuine use in relation to the goods and services for which it is registered during the five years leading up to the date when the application for the mark opposed was published. This evidence should demonstrate, for example: 

• for which goods or services the trade mark has been used, in relation to the goods and services as covered by the registration;
• the financial turnover from sales of these goods or services under the trade mark during the five year period;
• if possible, examples of sales records showing the mark in use for the goods/services for which use is claimed e.g. copies of sales invoices or similar sales records;
• how the goods/services have been advertised under the trade mark, if possible with examples of such advertising from the relevant period;
• the period of time during which the trade mark has been used and the geographical area in which it has been used; and
• how the trade mark is used in relation to the goods/services e.g. on labels, signs, invoices, advertising materials etc.

Hearing / written submissions

Once the periods for filing evidence or submissions are complete, the parties will be invited to file final submissions (legal arguments) in support of their position, or to request a hearing where oral arguments are put forward in support of each party’s position based on the pleadings and evidence filed. It remains open to either party to request a hearing. Even when a hearing takes place on request of one party, the other party can still decide to simply file written submission in lieu of the hearing.

Decision

The opposition decision is usually issued around to months from the hearing or from the close of proceedings respectively. The successful party will be issued an award of costs, but the decision usually follows a predetermined scale and is therefore unlikely to cover the actual cost of the dispute. The UK IPO has published an updated scale of costs.

Appeals

The opposition decision is open to appeal in two ways. The first avenue of appeal is to the Appointed Person, who is an experienced trade mark practitioner appointed to hear appeals before the UK IPO. The decision of the Appointed Person is not open to a further appeal. The second avenue of appeal is to the High Court, where decisions can be appealed to the Court of Appeal and beyond.

Both means of appeal have their pros and cons, and so it depends on the nature of the dispute to help determine which route would be best.

Length of proceedings

Assuming the opposition proceeds to a final decision in ‘normal’ circumstances, the proceedings before the UK IPO take around eight to 12 months to reach an initial decision.