Filing and Defending Trade Mark Oppositions
Are you a trade mark owner mindful about maintaining the strength and integrity of your brand?
If so, have you thought about raising an opposition or objecting to a later filed trade mark application? Or perhaps, you have filed a trade mark application and now wish to defend your commercial interests? The team of experienced trade mark attorneys at Albright IP can advise how best to ensure that your brand is protected and not diluted.
Once a trade mark application has been filed, there are a number of legal hurdles that must be overcome before a trade mark owner can claim an exclusive proprietary interest. As part of the examination procedure, the trade mark application will be assessed on descriptive and distinctive grounds. If the trade mark is considered to be capable of registration and sufficiently distinctive, it will proceed to publication and remain open to third party opposition for a period of time. The publication period will be open for two months in the UK (with concerned parties able to extend this period by a month) and three months in a European (Community Trade Mark – CTM) application. During this time a concerned party is able to, and in some cases is invited to, raise an objection against the trade mark on the grounds that it is identical or confusingly similar to a trade mark that they have previously filed and/or have a prior commercial interest in or usage of.
Why file an Opposition to a Trade Mark Application?
- Avoid brand dilution and defend your rights.
- Police your rights.
- Put the market “on notice”.
Trade mark owners must proactively police their rights both on the Trade Mark Register and in the marketplace. Consumer confusion will diminish goodwill in your brand name and divert sales from your company. Also, the Trademark Register must be kept as clear as possible to ensure that registered rights are not diluted by conflicting registrations “slipping” onto the Register. This is particularly important when seeking to enforce your monopoly rights against third parties. A crowded Trade Mark Register will make enforcement more complex and costly.
Trademark watching is an excellent and cost effective way to monitor the publication of conflicting trademarks and the registration of domain names and company names. These services run on an annual basis and the trademark team at Albright IP can set up a tailor made watching service for your trademarks, domain names and company names. Watches can be UK, European or worldwide.
If opposition is not filed during the publication period, it may be possible to seek invalidation of the registered trade mark post-grant.
How To File An Opposition Against a UK Trade Mark Application
Prior to filing formal opposition, it is recommended to contact the Applicant to put them on notice of your intention to file opposition and also, to explore whether an amicable settlement can be reached, for example, if there is practical distance between the party’s activities. The trademark attorneys at Albright IP are experienced in negotiating coexistence agreements and commercial settlements in opposition proceedings and their advice should be sought at the very earliest stage, preferably before contact is made with the Applicant and your hand revealed.
After the Notice of Opposition has been filed, the Applicant must file a counterstatement within two months, failing which their Application will be deemed abandoned. Alternatively, prior to filing the counterstatement, the parties can jointly request to enter the cooling off period, which is designed to allow the parties to explore settlement negotiations. The cooling off period can be extended further, if necessary, or on the other hand, terminated, if negotiations break down or reach an impasse. Following this, the Applicant’s counterstatement must be filed within one month.
Thereafter, the Opponent and the Applicant each have the opportunity to file evidence and submissions in support of their case. The Opponent can subsequently comment in reply to the Applicant’s submissions. After the written stages of the opposition procedure, the UK IPO will render their decision, either on the papers or after an oral Hearing at the request of one of the parties. The UK IPO’s decision is subject to appeal and an award of costs will be made in favor of the successful party.
How to Defend your UK Trade Mark Application
There are a number of options available to the Applicant and the merits of these will depend upon the circumstances of the opposition. Again, expert attorney guidance should be obtained to advise you. For example, submissions could be made regarding the differences between the trademarks in question, their respective goods/services, channels of trade and distribution. In addition, it may be appropriate to put the Opponent to proof of use of their Trademark or to seek to revoke or to invalidate the earlier Trademark relied on.
As mentioned above, an amicable resolution could be sought by way of a specification limitation/amendment or a coexistence agreement.
If you are interested in learning more about filing and defending trade mark oppositions… contact the team at Albright IP who will confidentially advise you.