What are the grounds for opposing a trade mark?

What are the grounds for opposing a trade mark?

Concerned about the threat that a new trade mark might pose to your business?

Regardless of whether your trade mark registration application has recently been objected to by another business and you want help addressing this, or you’re keen to oppose a new competing trade mark, it pays to understand how this process works.

Below, the expert team at Trademark Eagle explains when, how, and on what grounds you can oppose a trade mark.

What are the grounds for trade mark opposition?

Unsure whether you have valid grounds to oppose a trade mark application?

The expert team at Trademark Eagle can help. Below, we explain the two main grounds for trade mark opposition in more detail, including who can use these grounds to refuse a trade mark registration.

Relative grounds

The majority of objections to trademark applications are based on someone having earlier rights in the same or similar mark which they feel may damage their rights.

Owners of a trademark can file an opposition against a later competing trademark Under Section 5 of the Trade Marks Act 1994. , Opposing a trade mark on relative grounds means there’s a pre-existing trade mark (either registered or unregistered) owned by a third party and they have legitimate concerns the competing application would create damage to their brand.

Unlike absolute grounds which we deal with below, only the owner of the earlier trade mark or right can use relative grounds as a reason to oppose a trade mark.

Filing based on a registered trademark is usually an easier process than relying on an unregistered mark which must demonstrate it has a reputation and goodwill accrues over a period of time. Often an opposition will be filed based on a trademark registration as well as the use that has been made of it.

Absolute grounds

Trademarks are examiner under Section 3 of the Trade Marks Act 1994, to ensure that they meet the criteria for acceptance.

Under Section 3 of the Trade Marks Act 1994, trade mark opposition filed on absolute grounds means there’s a defect in the trade mark itself.

For example, the trade mark may be descriptive of the goods or services for which it is to be registered, too generic for those goods or services, or non-distinctive and should be free for anyone in the relevant trade to use.

Anyone can oppose a trade mark based on absolute grounds.

As an alternative anyone can file observations, which does not involve paying an opposition fee, or involve the person in contentious proceedings. Their purpose is to draw the attention of the Examiner to their concerns. However, in our experience filing Observations has little effect and if an application is of serious concern, then an opposition would need to be filed to ensure it is reviewed properly.

When can you oppose a trade mark?

Trade marks can be opposed by any third party once they have successfully passed the examination process and have been advertised in the Trademark Journal.

This examination is carried out by a trade mark examiner at the Registry who will ensure the mark meets the requirements of a registrable trade mark and in the UK and EU they will notify the owners of similar marks so they have the opportunity to raise any objections they might have. This is an imperfect system as not all similar trademarks will be notified.

The trade mark will then be made available for third parties to analyse when it’s published in the online Trade Marks Journal.

Third parties will have a two-month period in the UK (which can be increased to three months) to oppose its registration.

You can increase this period to three months by filing a TM7a ‘Notice of threatened opposition’ form, as long as you file this form within the initial two months after it’s been published.

This will inform the IPO (Intellectual Property Office) that you intend to oppose the trade mark, so you should only fill out this form if you are seriously considering trade mark opposition. It is also expected that you will liaise with the owner of the trade mark Application to see whether you can resolve your concerns without formally opposing the application and this can be factored in, in any award of costs.

How to oppose a trade mark

You will need to fill out a TM7 ‘Notice of opposition and statement of ground’ form to officially oppose a trade mark. This can be after you have extended the opposition period by filing the TM7a, or you can oppose without extending the opposition period.

It’s important to bear in mind, however, that there is a fee payable with this form of between £100 and £200. For example, if your opposition is based on Sections 5(1) and/or 5(2) grounds (relative grounds), the fee will be £100.

On the other hand, if your trade mark opposition is based only on grounds other than Sections 5(1) and/or 5(2), for example, Section 3 (absolute grounds), there will be a £200 fee.

Similarly, the fee for trade mark opposition will also be £200 if your opposition is based on Sections 5(1) and/or 5(2) and one or more other grounds. For example, if you oppose the trade mark registration application on both absolute and relative grounds, or because your trade mark also has a reputation.

Once you have filled out the form, with help from a trade mark expert (if necessary), you can either email the form to the IPO at forms@ipo.gov.uk or send the TM7 by post to either their London or Newport office:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ

Intellectual Property Office
3rd Floor
10 Victoria Street
London
SW1H 0NB

 

Alternatively, you can also fax fee-bearing forms to the IPO at 01633 817777.

Once a trade mark has been registered, there are several forms of legal action you can take, but you won’t be able to oppose the trade mark by filling out a TM7 form.

For those that are considering trade mark opposition, it’s advisable that you attempt to resolve the issue with the applicant before seeking legal action. Not only does this approach give you an opportunity to resolve the conflict amicably, but it could also save you money.

This is because filing a TM7 form prior to contacting the trade mark applicant and trying to resolve the conflict can mean you’re not awarded any costs if you succeed in the opposition

Need help opposing a trade mark? Contact Trademark Eagle today

To protect your trade mark rights, it’s important you dedicate plenty of time and resources to identifying competing trade mark registration applications.

Regardless of whether you’re concerned about intentional or unintentional trade mark infringement, failing to spot these applications and respond with the relevant legal action can have a detrimental impact on your rights and the success of your business.

Fortunately, the experienced team of professionals at Trademark Eagle can provide you with expert trade mark protection services and advice. From carrying out essential trade mark research to filing your applications for you and dealing with the process within the Registry. We also have subscription monitoring services so that clients can be made aware of damaging trade mark applications allowing them to address these before they are registered.

Supplied with up-to-date information and search software, we can help you to limit damage to your brand and take swift legal action against both national and international competing trade marks.

If you’d like to learn more about trade mark opposition or what constitutes infringement of a trade mark, please don’t hesitate to contact the expert in-house legal team at Trademark Eagle.

To get in touch, you can either arrange your free initial consultation over the phone by calling 0122 3208 624 or reach out via email at info@trademark-eagle.com.

Alternatively, we also welcome enquiries sent in using our convenient online contact form or live chat feature.