Once a trade mark application has successfully passed the IPO’s examination process, it’s accepted and published in the IPO’s Trade Marks Journal.  It is then open to scrutiny by third parties for a two-month opposition period. If an interested third parties considers that they have grounds oppose the trade mark application, they can do so during that period.

A trade mark opposition can be based on either ‘absolute’ and/or ‘relative grounds’; relating to potential defects in the trade mark itself or conflicts with existing trade marks, respectively.  It is possible to oppose an entire application or partially for some of the goods or services that have been applied for.

The absolute grounds for refusal

Section 3 of the TMA sets out the ‘absolute grounds’ for the refusal of a trade mark application.  These are commonly raised by the IPO during its examination of the trade mark, although they can be raised in opposition proceedings be an interested third party.  The most common absolute grounds for refusal of a trade mark application is that the trade mark is:

1.      descriptive of the goods and/or services for which it is to be registered;

2.      generic for those goods/services; and/or

3.      non-distinctive and therefore, should be free for all traders to use.

It is possible that there may be grounds to oppose on the basis of more than one absolute ground.

Relative grounds for refusal

Section 5 of the TMA sets out the ‘relative grounds’ for refusal of a trade mark application. These are the grounds on which a trade mark application may be opposed on the basis of an “earlier right”.  In short, the IPO will refuse to register a trade mark if:

1.      it is identical with an earlier trade mark and the goods and services for which the trade mark is applied for are identical to those of the earlier trade mark;

2.      it is identical with or similar to an earlier trade mark and the goods and services for which the trade mark is applied for are similar or identical to those of the earlier trade mark and as a consequence, there is a likelihood of confusion on the part of the public, which includes a likelihood of association with the earlier trade mark;

3.      it is identical with or similar to an earlier trade mark, which has a reputation in the United Kingdom, and use of the later mark without due cause would take unfair of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;

4.      its use is liable to prevented by virtue of any rule of law, which most commonly refers to passing off; and/or

5.      its use is liable to prevented by the law of copyright or the law relating to industrial property rights.

As with the absolute grounds it is possible that there be grounds to oppose on the basis of more than one relative ground.  In fact, it is common for opponents to plead their opposition on grounds 2, 3 and 4, above, although they often ‘rise and fall’ together.

If you are considering opposing a trade mark application, in the first instance, it may be worth instructing a legal representative, like ourselves, to engage in correspondence with the applicant. Many trade mark applications are withdrawn after the applicant has been put on notice of an intended opposition.  From a costs recovery perspective, it is also reasonable to approach the applicant before formally opposing, in order to allow them to withdraw their application (if the opposition is compelling).  Obtaining legal advice at an early stage is also beneficial as your legal representative can provide advice on merits (i.e. whether there are grounds for your opposition), which grounds your opposition should be based on, and tactics in pursuing the opposition.

At the same time as notifying the applicant of your intended opposition, it is also advisable to file form ‘TM7a – Notice of threatened opposition’ with the IPO.  This form is free of charge and also has the dual benefit of extending the opposition period by one month (to a total of three months).  Filing form TM7a does not commit an opponent to opposing the application but instead serves as a means of putting the applicant on notice of that intended opposition (as the IPO will in turn notify the applicant that the TM7a has been received).

Assuming that the applicant does not withdraw their application on being informed of your intended decision, you will need to decide whether you wish to formally oppose the application.  In order to do so, you will  need to file the form ‘TM7 – Notice of opposition’, specifying the grounds of opposition (as set out above) along with an explanation as to why those grounds are made out.  The filing fee for this form is either £100 or £200, dependent upon the grounds of opposition relied upon.

Once the notice of opposition has been filed, the IPO will examine it and notify the applicant that their application has been opposed.  The applicant will then have two months to file form TM8, which operates as their defence and counterstatement, or form TM9C, which requests a ‘cooling-off’ period (see our below comments).

As with a traditional civil claim, the applicant’s defence provides it with the opportunity to admit or deny all or part of the opposition.

Once statements of case have been concluded the IPO will set a timetable for submission of evidence of fact in support of the parties’ case) and arguments supporting both parties’ case, starting with the opponent.  For example, if an opposition is based on an existing trade mark that is  over 5 years old the opponent may be required to establish ‘genuine use’ of it (i.e. that it has been used for the goods and services that it is registered for).  Where an opposition is based on a trade mark with a reputation or passing off, it is for the opponent to show that a reputation or goodwill (as applicable) exists.  Evidence on behalf of the applicant is relevant most often where there is a claim to ‘prior rights’ or where there is a counterclaim that the earlier trade mark is invalid.

On conclusion of the evidence rounds, the parties will be invited to either file written submissions in order for a decision to be reached on the papers or request a hearing.  Most oppositions are determined based on the papers, but hearings can be useful where there is a dispute relating to the evidence or where there are complex submissions to be made.  Within 8-12 months following the parties’ written submissions or the hearing, the IPO will issue a decision.  Such decision will ultimately determine whether or not the trade mark application will be registered or refused.

Either party may appeal the IPO’s decision by appealing to the High Court (for a court fee of £240) or to an ‘appointed person’ of the IPO (who is often a senior trade mark lawyer, for an official IPO fee of £250) within 28 days.  A decision made by the appointed person cannot be further appealed, whereas appealing to the High Court can be appealed further, however this will all, of course, incur further time and costs.

Proceedings before the IPO are separate to those before the courts.  Parties are not bound by the Civil Procedure Rules, but it is advisable to approach proceedings before the IPO in a proportionate manner and to seek settlement opportunities where possible.

Trade mark disputes are often settled by the parties agreeing to ‘co-exist’.  In practice, this involves an applicant and opponent agreeing to use their own trade marks and brands in their respective fields, but in such a manner that will avoid potential confusion between them.

Agreements to co-exist are often negotiated during the ‘cooling-off’ period (referred to above), which can be entered into with the consent of both parties during the two-month period for filing a defence.  In practice, parties can request a cooling-off period by filing form ‘TM9C’ with the IPO.  This provides the parties with an initial 9-month period (potentially extendible by a further 9 months by filing form TM9E) to negotiate a resolution to the dispute before entering the evidence stage of proceedings.

Parties can of course reach settlement at any time during the opposition proceedings.

The traditional rule in civil litigation is that the losing party will be ordered to pay some or all of the winning party’s costs.  Proceedings before the IPO are slightly different, with the losing party typically being ordered to pay a contribution towards the winning party’s costs, in line with a published scale.

The published scale can be found in Tribunal Practice Notice 1/2023 (Tribunal Practice Notice (TPN) 1/2023: Costs in proceedings before the Comptroller - GOV.UK), which sets out that the winning party is entitled to receive a contribution towards their costs for each stage of proceedings.  The upper limits are lower (for example) than those in the Intellectual Property Enterprise Court, with the intention that smaller businesses should be able to enforce their trade marks before the IPO without the risk that if they fail they will be on the hook for significant costs.

Notwithstanding the published scale, the IPO retains the discretion to award beyond the standard scale where one party has acted in an unreasonable manner.  This may include actions that unnecessarily increase the burden or costs on the other party, any repeated breaches of procedural rules or deliberate delays; however, a party’s loss in itself is not considered unreasonable behaviour.