Applications to register trade marks are no longer refused at the examination stage because of earlier conflicting trade marks. Applicants are notified, when their application is examined, if there are any earlier trade marks which may conflict. If the applicant chooses to proceed with their application, it is then published in the Trade Mark Journal. At that time, notification of such publication is sent to owners of any earlier UK trade marks or International marks protected specifically in the UK. Notification is also sent to owners of any relevant International trade marks protected throughout the EU as a whole and European Community Trade Marks, but only if they have asked to receive such notifications.
The Trade Marks Journal is published every week on the UK Intellectual Property Office (UK IPO) website with details of those trade mark applications then accepted for registration. The owner of an earlier trade mark or right which wishes to object to a new application has two months from the date of publication in the Journal to lodge a formal opposition. This period can be extended by one month. If no opposition is received, the new application will proceed to registration.
If opposition is filed (on Form TM7), the proceedings take place at the UK IPO. When the opponent and the applicant have set out their case and submitted any evidence they wish to rely upon, a Hearing Officer, acting on behalf of UKIPO, then makes a decision. This decision can be appealed to an independent authority known as The Appointed Person, or to the High Court.
If the opposition is based upon the existence of an earlier trade mark that has been registered for 5 years at the date when the new application was published, the opponent must state whether, and for which goods or services, the earlier registered mark has been used in that period. The applicant may then require the opponent to prove that the earlier mark has been used for those goods and services. It is not possible for an opponent to rely upon the registration of an earlier mark for goods or services for which genuine use cannot be shown in the 5 year period, unless there are proper reasons for non-use.
UK Intellectual Property Office
Where the opposition is lodged because it is alleged there is a likelihood of confusion with an earlier trade mark, the UK IPO will normally issue a preliminary indication of the likely result of the opposition on that ground. However, they will not do this if both parties ask them not to or the Hearing Officer considers that the likely outcome is too difficult to predict.
Where a preliminary indication is given, it is issued after the applicant has filed its defence through a counterstatement, but before either side has filed evidence. Thus, the preliminary indication cannot take account of any subsequent failure on the opponent’s part to show genuine use of an earlier trade mark on which it has based its opposition.
The preliminary indication is not binding. Also, if despite such indication the opposition proceeds, the final decision will be taken by a different Hearing Officer, who could take a different view to that set out in the preliminary indication. Nevertheless, the preliminary indication should be taken seriously as a party proceeding in the face of an adverse indication may stand a significant chance of losing and becoming liable for further costs.
Opposition proceedings are sometimes started because of wide specifications in trade mark applications which give rise to a fear of conflict which may not happen in practice. Accordingly, it may be that the applicant would be prepared to restrict the scope of goods and/or services set out in its application, or possibly to withdraw altogether, in order to avoid a legal dispute.
Anybody considering opposing a trade mark application should thus consider approaching the applicant first, to see if they will either amend their application so as to avoid the goods and services of concern (if that is possible) or withdraw the application altogether. If this is not done, and the applicant quickly amends or withdraws its application which makes it unnecessary to proceed with the opposition, the opponent is probably unlikely to be awarded costs to help meet the cost of filing the opposition.
The applicant has three months from the time that they receive notice of an opposition to submit their defence on a counterstatement (on Form TM8) giving reasons why the opposition should be rejected. If both sides agree, this period may be extended by nine months (called ‘cooling off’, applied for on Form TM9) so that the parties may negotiate a settlement.
If a counterstatement is filed, the UK IPO may, as said before, issue a preliminary indication. If it does, and the party who the UK IPO thinks may lose accepts it, then the opposition will be concluded in favour of the other party, unless there are further grounds of opposition in addition to a claim of likelihood of confusion with an earlier trade mark.
If the party who the UK IPO thinks may lose rejects the preliminary indication (by filing Form TM53) or no such indication is given, or there are further grounds of opposition, the parties will be given a chance to file evidence to support their case.
Firstly, the opponent will be given up to three months to file evidence. If the applicant has exercised its right to require the opponent to show use of its earlier trade mark(s), the opponent’s evidence must address this requirement.
Secondly, the applicant will then be given up to three months in which to file any evidence it wishes the Hearing Officer to take into account.
Thirdly, and only if the applicant files evidence, the opponent be given up to three months within which to file further evidence strictly in reply to the applicant’s evidence.
Once the parties have submitted this evidence, the UK IPO Hearing Officer will give the parties a chance to make oral arguments at a face to face hearing or to file written arguments instead.
After considering all the evidence and the arguments, the Hearing Officer will issue a decision and decide who should pay any costs.
Nearly 60% of oppositions are concluded inside a year. However, about 40% take longer, and the costs awarded by UK IPO against an unsuccessful party also vary. If an applicant is given reasonable notice before filing opposition, costs start at £500, even if the application is withdrawn without any further action. If the proceedings go the full distance, it is not unusual to have to pay or receive £2000 in costs. However, these costs usually do not meet the full costs incurred.
