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Trademarks: What is the opposition procedure?

24-08-2016

We have written previously about oppositions and how they provide third parties with the opportunity to raise objections to trademark applications. But, what is the opposition procedure – and how can brand owners make best use of it to protect their trademarks?

The registration of a trademark is, of course, only the first step in the effective use of a chosen brand, company or product name. In order to ensure valuable marks are protected and enforced, brand owners also need to monitor new applications to ensure that those potential trademarks don’t infringe or potentially damage their existing rights.

Why monitor new applications?
The early detection of potentially infringing trademarks is an essential part of any trademark protection strategy, but it is a particular necessity if you are to meet the deadlines associated with submitting objections (known as ‘oppositions’) to an attempted registration by a third party of a conflicting trademark. In general, such oppositions need to be filed within two months of the attempted registration of a potentially conflicting trademark. (Challenging trademarks after registration is a far more costly affair.)

Trademark watching plays a critical role in such early detection by monitoring and assessing all new trademark registrations at the relevant national and international trademark registries (click here for advice on developing a trademark watching strategy).

Watching services  can be tailored to meet specific business needs but, in general, will fall into one of the following categories:

  • Identical trademark watch: Identifies marks or devices (e.g. logos) that are visually or phonetically identical;
  • Similar trademark watch: Identifies identical and confusingly similar marks;
  • Trademark watch with opinion: Includes the attorney's recommendation on the results of the identical or similar trademark watch based on their consideration of a company’s prior rights and the likely impact on its business and market share.

What happens if a watching service identifies a conflict?
On acceptance of a trademark application, the registry will publish the new trademark for ‘oppositions’. This is the process by which trademark owners and other third parties can challenge trademark applications that they are identical or confusingly similar to their own rights. As we mentioned earlier, the window for bringing such actions is pretty short (generally two months).

In 2013, the UK’s Intellectual Property Office (IPO) introduced a fast-track opposition procedure to speed up the process of raising objections and to reduce the costs incurred during the standard opposition procedure. At the time, the UK IPO estimated that decisions under the new fast-track system would be made within six months or less, as compared to the nine to 18 months that is normal under the standard opposition procedure.

It is important to note, however, that there are a number of additional conditions that need to be met in order to employ the fast-track procedure. For example, unlike with standard oppositions, an opposition can only be filed by (or on behalf of) the owner of a registered trademark. In addition, the opposition can only be based on grounds that the application is for a similar or identical trademark to the registered trademark and includes similar or identical goods or services. Where the trademark registration is more than five years old, opponents also need to provide proof of use in support of their opposition within the notice of opposition itself.( In a standard opposition, the need to file proof of use comes much later in the process and often oppositions are settled before such expense is incurred.)

For the owner of a registered trademark that is less than five years old, therefore, there are clear and welcome benefits to using the fast-track system since they will receive a faster decision at a lower cost. For other businesses, however, it may be preferable to file a standard opposition or, in some cases, both simultaneously. Businesses are advised to consult with their trademark attorney in order to identify the procedure most suitable for them.

Contact us today for advice on developing a trademark watching strategy or for guidance on raising oppositions to potentially conflicting trademark applications.