Opposing a trade mark, disputing a trade mark and defending a trade mark FAQ

Filing a trade mark opposition - stop brand being hijacked
Frequently Asked Questions

What is a trade mark opposition?

A trade mark opposition is a legal process that can prevent a trade mark applicant from gaining registered rights to a brand name or logo.

Are there any important time limits?

Yes! You can only oppose someone who is trying to register a mark of which you disapprove within a specified period of time from the date of the publication of the trade mark application– usually 3 months – after which it is too late and the offending trade mark will be registered.

Do I need a lawyer to act for me?

Trade mark law is a highly complex legal area. Any error or misleading statement may have a serious effect on your chances of successfully opposing or defending an opposition action. We strongly recommend that you consult a legal expert.

We are always happy to give free expert advice on + 44 (0)20 7749 2700.

What work will my lawyer do for me?

The opposition procedure is very technical and it is usually necessary to deal with a number of legal issues in order to succeed. Formal Statements need to be drafted and filed with the Trade Marks Registry. Evidence in support of your opposition needs to be sorted out. Your opposition will usually only be resolved after correspondence between lawyers for the parties in which the legal points are presented and considered. The resulting agreement over the use of the respective trade marks usually needs to be set out in a properly drafted legally-binding agreement signed by both parties. It is a good idea to seek specialist legal help from your solicitor in order to avoid costly legal and commercial errors.

Can I use my solicitor or do I need a trade mark agent or trade mark attorney?

Yes. You do not necessarily have to use a trade mark agent or trade mark attorney.

Can I file trade mark opposition if I do not have a registered trade mark?

Yes. There is no need to be a registered trade mark owner. You can even oppose an application if you find it offensive, unfair or objectionable on other grounds.

What do I have to do to file a trade mark opposition?

You need to complete the necessary documentation, draft a properly reasoned Statement of Case, get your evidence together and pay the Registry fees. We can do all this for you at very reasonable cost. However, that is only the beginning of a procedure that will need to be resolved by agreement with the other party or by final determination by the Registrar.

What will happen if I do not file a trade mark opposition?

If you do not act in time, the applicant will succeed in getting his or her own trade mark registration. This will mean that your brand will no longer be unique, and you can lose customers, business and your accumulated goodwill.

How can I keep an eye on new applications that are being filed at the Registry that might threaten my trade mark?

We can watch for new conflicting or 'copy-cat' applications and advise on how to oppose your competitors.

What will happen if someone files a trade mark similar to mine at the UKIPO?

If you already have a registered mark, the UKIPO, which is the government agency that oversees trade marks in the United Kingdom, may, depending on the territory your registration covers, write to you to alert you to the issue.

Please contact us for advice as soon as you hear from the UKIPO and are unsure how to proceed. Delay at this point can be catastrophic.*

If I lose my trade mark in the UK can I still protect it by registering it in other parts of the world?

Yes, depending on what is registered in other countries. We can advise you on trade mark protection and registration in all parts of the world.*

How can I protect my domain name?

Domain names and cost-per-click keywords are frequently misused to divert customers to a competitor’s site. Various dispute resolution processes exist, but trade mark registration is the most effective way of preventing the competition taking trade away from you. Ask us for expert advice.

Can I keep my domain name if someone registers a similar name as a trade mark?

It depends. If the goods and services are very different, you may be able to retain your domain name. If the trade mark registrant is in a similar business, however, you may find that you are infringing his or her registration, and may be forced to give up your domain name. If you have used the domain for a long time, you may have other rights that can be enforced – but this can be costly and difficult. Each case differs: please ask for our advice.

How long does it take to resolve a trade mark opposition?

Some cases are resolved very quickly, and we always try to settle matters amicably. Each case involves different legal and commercial issues and much depends on the attitude of the interested parties.

How much will it cost?

It is always our aim to settle matters quickly, expeditiously and economically. We will be pleased to provide you with a written quote once we understand your particular case and the work that will be involved.

How can I register my name as a trade mark?

Our team of experts can act immediately to draft and file an application to protect your name as a trade mark.

Full details and free legal advice about registering your trademark can be found at:

*What are the steps of an opposition?


Click the image above for a diagrammatical representation of a typical opposition action.

*If I miss the deadline to oppose and the other party's trade mark is registered, do I still have any chance to challenge it?

Yes, challenging a registered trade mark requires an invalidation action. You must be able to prove that the registered trade mark has not fully satisfied the legal requirements for registration, or that it conflicts with your registered or unregistered trade mark. An invalidation procedure is more difficult than an opposition and often costs significantly more.

 

Frequently asked questions about trade mark opposition. Free trade mark advice (trademark advice). We are specialist trade mark lawyers based in London, United Kingdom.

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