A third party has opposed my trade mark application, what are the next steps and what can I do?
The TMA and Trade Marks Rules 2008 (as amended) set out the procedure in which parties must follow should they wish to oppose (or conversely, defend) a trade mark application. As set out above, an opposition must be raised within two months (unless extended) of the proposed trade mark being published on the trade marks journal. Should you receive a notice of intended opposition after your trade mark has been published, our intellectual property solicitors can advise as to the merits of the proposed opposition and what options are available to you. This may involve restricting the goods and/or services covered by your trade mark or entering into formal undertakings or a Co-Existence Agreement with the opponent, both of which form the basis of a contractual relationship between both parties, setting out their respective rights and obligation and, importantly, what will happen if a later infringement or opposition occurs. Of course, some trade mark oppositions are merely speculative and have no legal basis under the TMA or otherwise; our intellectual property solicitors are best-placed to advise as to what your preferred course of action ought to be in each scenario. An opposition must contain details regarding the existing trade mark that the opposition is based upon, a statement confirming that their trade mark has been put to use (for those trade marks that have been registered for 5 years) and a "statement of grounds", setting out why the trade mark application should not be successful. Thereafter (and generally within a further 2-month period), the application will have the opportunity to file a counterstatement, which rebuts the contents of the opposition, further setting out why the trade mark should proceed to registration. The period prior to filing a counterstatement also represents a further opportunity for the parties to seek an amicable solution to the opposition and via the parties' agreement, they can enter into a formal "cooling off" period, lasting up to 9 months (which can be extended by a further 9 months), in order for such to take place. Once the counterstatement has been filed, the IPO will usually invite the parties to file evidence in support of their respective position. This is evidence of fact rather than legal submissions and will generally relate to use of the existing and/or proposed trade mark; a successful opposition will likely hinge on establishing prior use of the existing trade mark; comparatively, an existing trade mark may be prone to a validity challenge (which may render the opposition unsuccessful), and further information in this regard can be found on our trade mark disputes page. Upon completion of the evidence rounds, the IPO will inform the parties that the opposition can then proceed to a substantive decision, which is usually based on the papers that have been received. For oppositions that involve contentious matters of fact, it is possible to request an oral hearing in order for such to be determined; this will require representation, for which our trade mark lawyers/solicitors will be able to assist. A final decision will then be handed down by the IPO's case handler within 2-3 months, bringing the total duration of the opposition to anywhere up to several years. It is possible to file a fast track opposition, which is helpful when seeking to reduce the long delays that take place during the evidence rounds. Should you wish to oppose a third parties trade mark application, then our intellectual property solicitors/lawyers will be able to advise as to the advantages and disadvantages of each option, when considering your position.