Briefings

BACK TO BASICS | UK TRADE MARK OPPOSITION PROCEEDINGS

Opposition term

A UK trade mark application (or UK designation of an international registration) may be opposed within two months from publication in the UK Trade Marks Journal.

The deadline may be extended for a period of one month, upon request filed in the name of the intended opponent.

We normally recommend asking the applicant to withdraw the application in advance of the initial deadline, or to request an extension of time for filing the opposition; otherwise, the opponent will not be entitled to a contribution to its costs if the application is not defended.

Filing the Opposition

The opposition may be filed on the basis of absolute grounds (ie that the mark does not meet the criteria for registration) or relative grounds (ie that the mark conflicts with an earlier right), including, for example:

  • the mark is devoid of distinctive character or is descriptive, or the application was filed in bad faith;
  • the mark conflicts with an earlier trade mark registration (or application therefor); this includes UK designations under the Madrid Protocol and, currently, EUTMs and EUTM designations under the Madrid Protocol*;
  • the mark conflicts with another form of earlier right (for example, rights acquired under the common law of passing off; an earlier design right; copyright).

*Although the UK has technically left the EU, its exit is under the terms of a withdrawal agreement, which provides for a transition period up to the end of December 2020. During the transition period, EUTMs and EUTM designations of international registrations continue to have effect in the UK, and may be relied on in a UK trade mark opposition.

The official fee must be paid within the opposition term. Where an opposition is based solely on a likelihood of confusion with an application or registration for an identical or similar mark, the official fee amounts to £100; if the opposition is based on any other grounds, the official fee increases to £200.

Cooling Off Period

The parties are encouraged to resolve the opposition amicably, if possible, and may jointly agree to enter a nine-month cooling off period.  A request to enter the cooling off period must be submitted within two months from admittance of the notice of opposition. If necessary, the cooling off period may be extended by a further nine months, up to a maximum of 18 months in total, again, with the agreement of both parties. Either party may terminate the cooling off period, if negotiations do not progress satisfactorily.

Counterstatement

If the parties do not enter the cooling off period, the applicant must file a counterstatement within two months from admittance of the notice of opposition.

This deadline cannot be extended, and failure to file the counterstatement in due time will almost always result in rejection of the application.

The counterstatement must indicate those aspects of the opposition which the applicant admits, denies, or requires the opponent to prove in evidence. Where the opposition is based on a trade mark registered five years or longer, at the time the application was filed, the applicant may also request proof of use. Under those circumstances, the earlier registration will only be taken into account in the opposition, to the extent the opponent proves genuine use of the mark during the evidence rounds of the proceedings.

Evidential Rounds

The opponent is set a two-month term to file its evidence in chief in support of the opposition.

Any evidence filed must be in the form of a witness statement; in a straightforward case, where there is identity or obvious similarity between marks and the goods or services at issue, it is not always necessary to file evidence.

If proof of use has been requested, the opponent should make sure to file evidence of the place, time, extent and nature of use of the earlier mark, during the five years pre-dating the application. This can include, for example, copies of invoices, advertising materials, photographs of product packaging / labels featuring the mark, or internet archives, dated within the relevant time-period. A detailed history of use of the mark can also be useful including, for example, details of turnover under the mark and the channels / outlets through which the relevant products or services have been sold.

The applicant is allowed two months within which to file its own evidence in chief; the opponent is then allowed a further two months to file evidence strictly in reply.

To minimise time and costs associated with irrelevant evidence, evidence in chief has been capped by the UKIPO at 300 pages, and evidence in reply at 150 pages. The parties should seek leave to exceed these thresholds, or there is a risk evidence may be struck out. If the evidence is not in the English language, a translation must also be submitted.

All deadlines set during the evidence rounds of the proceedings are, in principle, extendible; however, extensions of time are granted at the discretion of the UKIPO and must therefore be supported with detailed reasoning.

The UKIPO makes a strict distinction between observations on the merits of the case and evidence. Both parties may file observations within the above evidence terms. However, for tactical reasons, some parties prefer to defer their observations until the end of the proceedings.

Interim matters

The UKIPO may occasionally appoint a case management conference (CMC), an interim hearing, to discuss the ongoing conduct of the case. This typically arises where the parties disagree over discretionary decisions of the UKIPO (for example, whether an extension of time should be granted, or leave should be given for the opponent to add grounds to the opposition, or for one of the parties to file late evidence). Other reasons may include, for instance, requests for one of the parties to set out its case more clearly, for a confidentiality order or a security for costs. The parties may normally attend via telephone.

Suspension

The UKIPO may agree to suspend the proceedings, at the request of one or both of the parties, where it is proportionate to do so. Suspension can only be requested once the applicant’s counterstatement has been filed. Common reasons include where the earlier rights relied on by the opponent are themselves subject to opposition or cancellation proceedings. The parties may also require additional time to reach amicable settlement. In all cases, the suspension request must be substantiated with detailed reasons why the proceedings should be suspended, as the decision is at the UKIPO’s discretion.

The UKIPO’s decision

Once the evidence rounds are complete, the parties have the option of filing written observations or attending a hearing.

Written observations may suffice in straightforward or cost-sensitive cases. However, the parties may wish to attend a hearing either in person or via video-link, particularly where a case is complex or arguments are finely balanced; this provides the opportunity to counter the other party’s arguments directly, and respond to any questions the hearing officer may raise.

Prior to a hearing, or filing observations, the applicant should consider a fall-back position for the event that the hearing officer decides to maintain the opposition. The applicant might argue, for example, the opposition should not succeed if the goods or services are limited, even if the hearing officer decided to uphold the opposition for the current specification.

The hearing officer will normally issue a decision within a few weeks. The winning party is usually entitled to a contribution to its costs; unless one of the parties behaves unreasonably, the award is normally fixed under standard scale, published on the UKIPO’s website here . The hearing officer may apportion the award where neither party is entirely successfully, or declare that each party should bear its own costs.

Appeal

The UKIPO’s decision may be appealed up to the Appointed Person or the High Court, within a period of 28 days.

This update is for general information and does not constitute legal advice. If you have any questions regarding trade mark opposition proceedings, please get in touch with Corinna Hiscox.

Look out for further instalments in our Trade Marks Basics Series in the coming weeks, including our guide to Fast Track Trade Mark Oppositions.