How to challenge a trade mark application

You may have recently discovered a trade mark application that you feel is likely to cause confusion between your existing brand but fear not! There are both legal and non-legal ways in which you can challenge another business or individual’s trade mark application.

One of the main ways to object a trade mark application is by filing an opposition.  In the UK, every trade mark application will go through what is known as the ‘publication’ stage of the process where the United Kingdom Intellectual Property Office (UKIPO) advertises the mark applied for in their trade mark journal. During this two month window, anyone who feels a mark is identical or highly similar to that of their own mark or brand name can file an opposition. This period however, can be extended by one month (extending the publication period to 3 months) by filing for a ‘Notice of Threatened Opposition’ form (TM7A).

A TM7A will notify the trade mark applicant that you have an interest in filing an official opposition although there is no legal obligation for you to do so. Should you decide to file a ‘Notice of Opposition’ form (TM7) without a TM7A, you will be required to include a list of grounds for the opposition to support the application. The UKIPO will then check if there is sufficient enough evidence for the opposition to proceed. Thereafter, the trade mark applicant will have two months from the date in which you file the TM7 to file a defence by return.

Once you file a TM7 and list your grounds for the opposition, the applicant at this point could also either a)opt for a nine month ‘cooling off’ period to negotiate or b)withdraw their application completely.

As a last resort, the UKIPO will make an evidence-based decision on the outcome of the opposition whereby both you and the applicant can request to appeal the decision.

Another key way to challenge a trade mark application is to file for ‘third-party observations’ which are made only if you believe the application has been accepted in error. Note that making a third party observation is not regarded as ‘formal legal action’ and in doing so you must bring the UKIPO’s attention to any relevant facts of why you believe the application was accepted in error. For example, if you feel the proposed mark is descriptive of the nature of goods and services for which registration will be sought, you must list any relevant facts which evidence your points. The UKIPO will then make an evidenced based decision in accordance with the arguments filed.

If you have recently discovered an application that you feel is likely to be highly similar or identical to that of your mark, note that it is always recommended that you contact the applicant to negotiate before taking any of the above steps. Contacting the applicant to come to an agreement first will not only save you time, but can also save you and the applicant potentially legal costs in the long run.

If you have any questions relating to this article or wish to proceed with challenging a trade mark, contact us today.


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