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:
