In Short
If your trade mark application is objected to in the UK, you may face a third-party observation or a formal opposition. A third-party observation is a non-legal action, whereas opposition is a formal legal dispute requiring your response. It is essential to seek legal advice to help navigate these objections and consider mediation or formal proceedings if needed.
Tips for Businesses
If your trade mark faces opposition, it is often best to attempt informal settlement through mediation first. Consider appointing a legal expert to guide you through the process. Avoiding a lengthy legal battle is key to reducing both costs and time spent on resolving the issue.
Summary
This article explains how businesses in the UK can handle objections to their trade mark applications, including third-party observations and formal oppositions. It provides guidance on both informal and formal processes, advising businesses on how to best navigate disputes. Content is provided by LegalVision’s business lawyers, who specialise in advising clients on intellectual property matters.
If you are a business in the UK attempting to register your trade mark with the Intellectual Property Office, you may encounter objections to your application. If someone objects to your trade mark, it is essential to understand your options. This article will discuss the different paths available following an objection and how best to deal with it.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Non-Legal Third-Party Observations
In the UK, there are two ways to object to your trade mark application. Someone can either:
- submit a third-party observation; or
- oppose the application directly.
Any person can make a third-party observation, and the Intellectual Property Office (IPO) is not obliged to respond or act upon them. A third-party observation occurs after the IPO publishes an application in the Trade Marks Journal.
The IPO will send a copy of these to the applicant; therefore, if there is a third-party observation against your trade mark application, you will receive this. As a third-party observation is a non-legal action, you are not obliged to respond to them. However, you do have the opportunity to do this if you wish and provide any relevant facts.
Formal Opposition
When someone opposes your trade mark, this is formal legal action. They can object to your trade mark application under two different grounds, namely:
- absolute grounds; and
- relative grounds.
Absolute grounds refer to problems with the trade mark itself, such as:
- the trade mark is too descriptive;
- it is not distinctive in character; and
- problems around whether it is too commonplace in the industry it seeks to register within.
Relative grounds refer to an earlier trade mark being in existence. If someone opposes your trade mark application based on relative grounds, they are arguing that the mark is already in use in a highly similar or identical form. This is important because each trade mark must be distinct from existing trade marks to avoid confusion. If multiple similar marks exist within the same industry, it could impact another business’ reputation or financial gain.
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Contact with Opposing Business
If another business has formally opposed your mark, they should contact you in writing, citing their reasons for their opposition. This will allow both of you to settle outside formal legal proceedings. Alternative dispute resolution, such as negotiations or mediation, is beneficial and faster than the formal legal procedure.
Opposition proceedings will usually commence with a cooling-off period, which allows both you and your opponent to attempt to settle the dispute. The IPO will send you a notice of the opposition, and you will have nine months to reach an agreement before formal adversarial proceedings begin. You can apply to extend the cooling-off period to a maximum of 18 months, but this is subject to the condition that both you and your opponent are trying to come to some form of settlement.
For many oppositions, informal negotiations between the parties are often enough to resolve the dispute and for both parties to come to an agreement. While this will usually give you a quicker and cheaper resolution than committing to the full opposition proceedings, make sure that you are aware of what you are conceding and what you are agreeing to, in order to ensure that you are not setting yourself up for failure later down the line.
Formal Opposition Proceedings
If you or your opponent decides to go ahead with formal opposition proceedings, you must draft and submit a defence to the grounds raised against your application. It will usually include details of why you reject the grounds raised by your opponent. The IPO will provide a timeline and deadlines for the submission of evidence. It will be beneficial to your prospects if you can gather evidence to disprove your opponent’s claims and support your own claims.
Evidence is usually in the form of witness statements and, therefore, must come from you, the owner of the mark and contain information which challenges and refutes the grounds that your opponent has raised.
Withdrawing or Abandoning Your Application
Another option is, of course, to abandon your trade mark application. If you are not able to reach an agreement with the other side, and if your legal position is weak, you may wish to consider this option. Withdrawing your application early in the formal opposition procedure ensures you have the highest likelihood of avoiding being held responsible for any of the other side’s legal costs. That said, withdrawing your trade mark application is irreversible and it can have significant consequences, particularly if it will take you some time to rebrand. We recommend discussing this option with a lawyer before taking any action.
Key Takeaways
If someone objects to your trade mark application, this can take the form of a third-party observation or a formal trade mark opposition. A third-party observation is a non-legal action anyone can submit to the Intellectual Property Office. Opposition to your trade mark is formal legal action and requires a response. To respond appropriately, it is advisable to instruct a legal professional to represent you in this dispute. A legal professional can first represent you in mediation proceedings to attempt to resolve the dispute outside of the legal procedure. They can also represent you in formal proceedings. In many cases, informal negotiations can resolve the dispute more quickly and cost-effectively than formal proceedings. Alternatively, if your legal position is weak or settlement cannot be reached, you may consider withdrawing your application to minimise costs, though this decision is irreversible and should be discussed with a lawyer first.
If you need help or advice about objections to your trade mark application, LegalVision provides ongoing legal support for all businesses through our fixed-fee legal membership. Our experienced intellectual property lawyers help businesses across industries manage contracts, employment law, disputes, intellectual property, and more, with unlimited access to specialist lawyers for a fixed monthly fee. To learn more about LegalVision’s legal membership, call 0808 196 8584 or visit our membership page.
Frequently Asked Questions
Someone can oppose your trade mark because it has not met the registration requirements or another business is already using it. These are absolute and relative grounds.
The most important thing to do is appoint a legal professional to advise you on the opposition. If you defend your position, you will need to decide if you will arrange mediation proceedings to settle the dispute or take formal legal proceedings.
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