Understanding the Process and Costs of Opposing Trade Mark Registrations in the UK

When a trade mark application is accepted by the UK Intellectual Property Office (IPO), it is published in the online trade marks journal. This publication triggers a statutory opposition period lasting two months, which can be extended by one additional month under certain conditions. During this window, interested parties may file an opposition to prevent the trade mark from being registered.

Opposition serves as the formal legal mechanism to challenge a published trade mark application. Objectors may oppose the entire application or limit their challenge to specific goods or services covered by the mark. Grounds for opposition fall into two categories: absolute and relative.

Absolute grounds relate to inherent defects in the trade mark itself. The most frequent absolute ground is that the mark lacks distinctiveness and should remain available for use by all traders in the relevant sector.

Relative grounds involve conflicts with earlier rights. Specifically, the opponent must hold an earlier trade mark or other prior rights—registered or unregistered—that would be infringed by the applicant’s mark if it were registered and used.

Any party may oppose on absolute grounds, but only the owner of an earlier trade mark or prior right may oppose on relative grounds.

The initial opposition period begins immediately after the trade mark’s publication date in the journal and lasts two months. This period can be extended by one month by filing a TM7a form, known as a ‘Notice of threatened opposition,’ within the initial two months. The TM7a must be submitted online and carries no fee. Importantly, filing a TM7a does not obligate the filer to proceed with opposition but should only be used if opposition is seriously contemplated.

For example, if a trade mark is published on 11 April 2013, the deadline to file a TM7 opposition or a TM7a extension request would be 11 June 2013.

To formally oppose without seeking an extension, an opponent must file a TM7 ‘Notice of opposition’ along with the appropriate fee within the two-month period following publication. If a TM7 is filed during the extended third month by a party who did not previously submit a TM7a, the fee will be refunded.

For parties seeking expedited opposition proceedings, the IPO provides a fast track option via the TM7F form.

Prior to initiating opposition proceedings, it is advisable to contact the trade mark applicant in writing to explain the grounds for potential opposition. The applicant’s address for service can be obtained through the IPO’s online database.

The IPO encourages parties to resolve disputes amicably and offers a mediation service to facilitate settlements. Mediation is generally faster and less costly than formal opposition proceedings and can help avoid protracted legal conflicts.

Understanding these procedures and options is essential for rights holders and businesses aiming to protect their trade marks or challenge conflicting applications effectively within the UK’s legal framework.