After the Intellectual Property Office (IPO) accepts a trade mark application, they will advertise it in their online trade marks journal.
You can object to an application once the IPO advertises it - and before they grant the registration. There are two main types of objections: third-party observations and oppositions.
Observations are not a formal legal action and the IPO will not necessarily act on a third-party observation. You may object to an application if you think the IPO has accepted in error. You must tell the IPO about any relevant facts they may not have been aware of. The IPO can use this as evidence in support of a later objection.
Trade mark opposition
Unlike a third-party observation, opposing a published trade mark is a legal procedure. It enables you to prevent a mark registration if you can provide sufficient evidence.
You can oppose the registration of a trade mark at any time during the two months after publication in the IPO journal. You can oppose the entire application, or only some of the goods or services it covers.
Grounds for opposing a trade mark application
The grounds for refusal of registration are divided into two classes:
- absolute grounds - relating to the intrinsic qualities of the mark
- relative grounds - relating to conflicts with earlier trade mark rights
Absolute grounds may apply:
- if the trade mark is generic, descriptive or non-distinctive
- where the objection applies to shapes, if the shape itself performs a purely technical function, adds value to the goods or results from the nature of the goods
The Trade Mark Regulations 2018, which came into effect on 14 January 2019, extend the existing absolute grounds to cover not just shapes, but any characteristic that is intrinsic to the goods applied for – eg a repetitive high-pitched sound in a fire alarm. Find out more about the changes to trade mark law in the UK.
Relative grounds for refusal occurs when the mark that someone applies for is already in use, or similar to one already in use. Anyone can oppose the application on absolute grounds but only the owner of an earlier trade mark or earlier right may oppose on relative grounds. This earlier right does not have to be registered.
Find out more about opposing a published trade mark.
Notice of threatened opposition
If you want to oppose the registration, you should file a notice of threatened opposition within the two months immediately after the date on which application was published.
There is no charge to file this notice. You can oppose the entire application or the registration of the mark for only some of the goods and services.
You may want to contact the trade mark applicant prior to filing the notice to tell them that you are thinking of opposing the application. You will find an address with the application in the online journal. Contacting the applicant in this way may give you a chance of settling a dispute amicably without costly legal action.
UK trade mark opposition procedure
Once you file a notice of threatened opposition, you can follow the fast track opposition process (if you are the owner of an earlier mark) or the standard trade mark opposition proceedings. Not all opposition will be appropriate for the fast track route. Costs and timescales will also vary depending on the process.
The IPO may impose a cooling-off period, ie allow extra time for both sides in opposition proceedings to try to settle their differences without the need to go through the full legal procedure.
Challenging registered trade marks
Once a trade mark has been registered, you can still take legal action to challenge it, although it is usually best to contact the registered owner to see if there is an alternative such as mediation or negotiation. The different types of legal action you can take are:
You can also apply to intervene in proceedings for the above actions.
If you do decide on legal action, be aware that this can be complicated and costly. Seek professional advice before taking action. Find a chartered trade mark attorney near you.