Trademark tips: Understanding the opposition procedure

Par Vanessa Harrow,

As we have written previously, it is crucial to act promptly when submitting objections (or oppositions) to challenge potentially conflicting trademark applications. But, what is the opposition procedure – and how can brand owners make best use of it to protect their trademarks? Vanessa Harrow outlines the process.

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 conflicting 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. In general, such oppositions need to be filed within a short period of time (perhaps as little as two months from publication of the attempted registration). 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; and
  • Similar trademark watch: Identifies identical and confusingly similar marks.

Both of the above types of watches can be provided with or without opinion. Trademark watches with opinion includes an attorney's recommendation on the results of the identical or similar trademark watch based on their consideration of prior rights and the likely impact on a business.

What happens if a watching service identifies a conflict?

On acceptance of a trademark application, the registry will publish the new trademark, triggering a period within which third parties can raise objections, generally by way of an opposition. This is the process by which trademark owners and other third parties can challenge trademark applications where there is a perceived conflict with their business and earlier rights.  More often than not trademark owners raise an objection because the new trademark is identical or confusingly similar to their own rights.

If you have an active watching service in place, when a conflicting trademark is published, you will be notified to allow a decision to be made as to whether you will oppose. As we mentioned earlier, the window for bringing such actions is pretty short and taking timely action is therefore very important.

How to decide whether to raise an objection

The decision will need to be made on a case-by-case basis and in line with your business/commercial strategy for IP.

Some businesses take a very aggressive approach to enforcement and will raise objections to any potential conflict, no matter how small. Other businesses take a more strategic approach and raise objections only where there is a clear and direct commercial conflict.

In all cases however, the assessment should consider, inter alia:

  • The scope of your earlier rights;
  • The level of similarity between the new trademark and your earlier brand;
  • Whether the common elements within the marks are descriptive or common to the trade;
  • The nature of the goods/services as covered by the trademarks and those which are in use in the market;
  • The identity of the third-party applicant and the scope of their existing protection in the relevant country and elsewhere;
  • The potential impact use of the new trademark would have on your brand and business; and
  • Whether there is any vulnerability in your earlier rights (e.g. subject to non-use cancellation and not used for all the goods/services) and the risk of a counter-attack.

Once you have decided to take action, you should then consider whether you wish to initially contact the third party to request withdrawal/limitation of the conflicting trademark. Once again, this decision will be made on a case-by-case basis and will depend on your business/commercial strategy.

Your trademark attorney will be able to help assess each case and provide strategic advice to move forward.

How does the opposition process work?

If settlement cannot be achieved before the deadline for raising objections, it may ultimately be necessary to take formal action against the conflicting trademark. The opposition process varies by jurisdiction and country. Some examples of the processes which trademark owners may encounter are as follows:

  • Russia – there are no formal opposition proceedings in Russia. While a trademark is still in the application stage, third parties can file observations which will be considered by the examiner but that third party will not be treated as part of the proceedings. If the examiner decides to still allow the trademark registration, third parties can then file an action post-registration.  
  • US – the publication of a US application begins a short 30-day period within which parties can file an opposition or request an extension to file opposition. Multiple extensions are allowed, however, once opposition is filed, it is run akin to full litigation. The opposition process includes depositions, discovery and oral hearings, and the costs of a US opposition can run to hundreds of thousands of dollars. Active settlement discussions are therefore encouraged and many opposition actions do not proceed through to a full decision.
  • EUIPO – the publication of an EUTM begins a three-month non-extendable opposition period. Once the opposition is filed, there is an initial cooling-off period within which the parties are encouraged to negotiate an amicable settlement.  If the cooling-off period is not extended, the next stage is for the opponent to submit further facts, arguments and evidence. The onus is therefore very much placed on the opponent at the beginning of EUIPO oppositions. The applicant will then be given a chance to respond before the opponent is given one more opportunity to reply. The EUIPO will then make a decision on the basis of the papers submitted. There are no oral hearings at the EUIPO.
  • UKIPO – the publication of a UK trademark begins a two-month opposition period which can be extended by one month by filing a Notice of Threatened Opposition. No further extensions are available. Failure to notify the applicant (either directly or by filing the Notice of Threatened Opposition) prior to filing the formal opposition action can have significant cost implications for the opponent. Once the opposition has been filed, the onus is then on the applicant to file a defence and counterstatement. It is also possible for the parties to request a cooling-off period to allow negotiations between the parties. If no defence or cooling-off request is filed, the application is treated as abandoned and the opposition is successful. If a defence is filed, the proceedings will generally then enter the evidence rounds, following which the parties can file further written submissions, request an oral hearing or request a decision be made on the basis of the papers as filed.  

The ‘fast-track’ option

Some jurisdictions, such as the UK, offer both a standard and fast-track opposition procedure; the latter offering to speed up the process of raising objections and to reduce the costs incurred during the standard opposition procedure. The fast-track procedure is not available for all oppositions and it does place a higher evidential burden on the opponent at the time of filing the opposition (rather than such material being filed in the evidence rounds). Nevertheless, for the owner of a registered trademark where no evidence of use is required, there are clear and welcome benefits to using the fast-track system. For other companies, however, it may be preferable to file a standard opposition. 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.

Vanessa Harrow is a Trademark Attorney in Novagraaf’s Manchester office.

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