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If you are a business in England 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.
Non-Legal Third-Party Observations
In England, 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 trademark 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 the mark is already in use in a highly similar or identical form. This is important because each trade mark must be distinct 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 mediation, is beneficial and faster than the formal legal procedure.
It can be helpful during mediation proceedings to appoint a legal professional to assist and advise you throughout the process. A mediation process is available from the IPO, and you should strongly consider this to avoid a lengthy and drawn-out formal legal battle.
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.
Formal Opposition Proceedings
If you or your opponent decide 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. You must gather evidence to disprove your opponent’s 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.
A hearing will be set, and both sides will submit further legal documents, which will further detail each argument. The total length of opposition proceedings is around eight months and up to around one year. After there is a decision, either side can appeal this. However, the length of time for this can be much longer.
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.
If you need help or advice about objections to your trade mark application, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 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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