Skip to content 
You have spent months, or perhaps even years, developing your business and building a brand. You have invested in a website, marketing materials, packaging and advertising, only to discover that your UK trade mark application has been successfully opposed by another business.
Naturally, your immediate concern is likely to be: Does this mean I have to stop using my brand name? The short answer is not necessarily.
A successful opposition to a UK trade mark application does not automatically mean that you are prohibited from using the brand name. However, it may indicate that another business has earlier rights which could potentially be enforced against you.
Understanding the difference between trade mark registration and the right to use a brand is essential before deciding what to do next.
In this article, Lawdit Solicitors explains what happens when a UK trade mark application is successfully opposed, whether you can continue trading under your existing name and what steps you should consider taking to protect your business.
1. What does it mean when a trade mark application is successfully opposed?
When you apply to register a trade mark in the UK, your application is examined by the UK Intellectual Property Office (UKIPO).
If the application satisfies the initial examination requirements, it is published in the Trade Marks Journal.
During the opposition period, third parties have an opportunity to challenge the registration of your mark.
Oppositions are frequently brought by businesses that own earlier registered trade marks and believe that your application conflicts with their existing rights.
For example, an opposition might be brought because:
- Your brand name is identical or similar to an earlier registered trade mark.
- Your goods or services are identical or similar to those covered by an earlier trade mark, creating a likelihood of confusion.
- The earlier trade mark has a reputation in the UK and your use of the proposed mark could take unfair advantage of, or cause detriment to, that reputation.
- Another business has established goodwill in a name and argues that your use would amount to passing off.
If the opposition succeeds, the UKIPO may refuse your application in its entirety or reject registration for some of the goods and services you applied for.
However, there is an important distinction between refusing to register a trade mark and preventing someone from using a brand name.
These are not the same thing.
2. Does a successful opposition mean I must stop using my brand?
No. A successful opposition does not, by itself, amount to a court order requiring you to stop using your brand.
Trade mark opposition proceedings primarily concern whether a particular trade mark should be registered.
They do not ordinarily determine whether the applicant is liable for trade mark infringement arising from its existing commercial activities.
This means that, even where an opponent successfully prevents registration of your mark, you are not automatically required to:
- Stop trading under your existing business name.
- Remove your branding from your website or social media accounts.
- Destroy existing branded products or packaging.
- Change your company name.
- Immediately rebrand your business.
Nevertheless, this does not mean that continued use is necessarily lawful.
The opponent may have earlier rights which could form the basis of a separate infringement or passing off claim.
The crucial question is not simply whether your application was refused, but whether your actual use of the brand infringes another party’s legal rights.
3. The difference between trade mark registration and trade mark infringement
Under the Trade Marks Act 1994, registration provides the proprietor with exclusive rights in the registered trade mark in relation to the goods and services for which it is protected.
Section 10 of the Act sets out circumstances in which use of a sign may amount to trade mark infringement.
These include situations where a business uses an identical or similar sign in circumstances that satisfy the relevant statutory requirements.
However, the test applied in opposition proceedings is not necessarily identical to the assessment required in an infringement claim.
An opposition will generally examine the trade mark as applied for, including the goods and services specified in the application.
An infringement claim, by contrast, will examine the sign actually being used, the manner of that use and the relevant commercial circumstances.
For example, you may have applied to register your brand for a broad range of goods and services, even though your business only sells a very limited range of products.
The UKIPO may find that your proposed registration conflicts with an earlier trade mark in respect of the wider specification.
However, this does not automatically establish that your actual commercial activities infringe the earlier rights.
Equally, the fact that you have been using your brand without receiving complaints does not mean that your use is lawful.
Each case must be considered on its individual facts.
4. What if I was using my brand before the other business registered its trade mark?
This is an important consideration.
A common misconception is that whoever registers a trade mark first will always have the strongest legal rights.
In reality, the position can be more complicated.
In the UK, businesses may acquire enforceable rights in an unregistered brand through the law of passing off.
To establish passing off, a claimant must generally demonstrate:
- Goodwill associated with its business, goods or services.
- A misrepresentation by another party which is likely to deceive the public.
- Damage, or a likelihood of damage, resulting from that misrepresentation.
If you were using your brand before the opponent began using or registered its mark, you may have developed earlier goodwill capable of supporting a passing off claim or defence.
In addition, section 11(3) of the Trade Marks Act 1994 provides a potentially important defence where a person uses an earlier right in a particular locality, subject to the statutory requirements.
However, prior use does not automatically entitle a business to continue using a brand throughout the UK.
The extent of any protection will depend on matters such as when the business began trading, the geographical reach of its goodwill, the nature of its customers and the relevant trade mark rights.
Evidence may include historic invoices, dated website records, advertisements, customer correspondence and sales information.
It is also important to distinguish between merely creating a brand name and actually establishing goodwill through trading.
Simply registering a company name or purchasing a domain name will not necessarily establish enforceable passing off rights.
5. What if the opponent has never actually used its trade mark?
Another issue worth investigating is whether the opponent has genuinely used the earlier trade mark on which it relied.
Under UK trade mark law, registered marks can become vulnerable to revocation for non-use where the relevant statutory conditions are met.
Generally, a registered trade mark may be challenged where it has not been put to genuine use in the UK for a continuous period of five years and there are no proper reasons for non-use.
In opposition proceedings, where the earlier registered mark is sufficiently old, the applicant may also be entitled to require the opponent to demonstrate genuine use of the mark in accordance with section 6A of the Trade Marks Act 1994.
This can be particularly relevant where an opponent owns a broad registration but has only used its trade mark for a limited range of goods or services.
If an opposition has already succeeded, the available options will depend on the decision, the procedural history and whether the relevant arguments were raised.
It is therefore important to examine whether the opponent’s registered rights are valid, enforceable and sufficiently broad to cover your actual commercial activities.
6. Can I appeal the UKIPO’s decision?
If your trade mark application has been successfully opposed, you may have the right to appeal the decision.
An appeal may be appropriate where you believe the UKIPO has made an error of law or reached a decision that cannot reasonably be supported by the evidence.
Appeals can generally be made to either the Appointed Person or the High Court.
The usual deadline for appealing a UKIPO opposition decision is 28 days from the date the decision was issued. Different procedural circumstances may affect the available remedies, so it is important to review the decision promptly. However, an appeal is not simply an opportunity to argue the same case again because you disagree with the outcome.
There must be proper grounds for challenging the decision, and the costs and commercial benefits of an appeal should be carefully considered.
In some circumstances, negotiating with the opponent may be a more practical and cost-effective solution.
7. Could I negotiate an agreement allowing me to continue using my brand?
Yes. Even where an opposition has succeeded, it may still be possible to reach an agreement with the opposing business.
Not every trade mark dispute needs to result in litigation or a complete rebrand.
In some cases, the parties may be able to agree terms allowing both brands to coexist.
For example, the opponent may be prepared to allow you to continue using your brand provided that you:
- Restrict your activities to particular goods or services.
- Agree not to enter certain markets.
- Make limited changes to your branding.
- Adopt a different logo or visual presentation.
- Agree to certain conditions designed to reduce the likelihood of consumer confusion.
Such arrangements are often documented in a coexistence agreement or settlement agreement.
However, the terms must be carefully drafted to ensure that the rights and obligations of both parties are clear.
A poorly drafted agreement could significantly restrict your business activities or create problems if you later decide to expand into new markets.
It is also worth remembering that the opponent is under no obligation to agree to coexistence simply because you have already invested money in your brand.
8. What happens if I ignore the opposition decision and continue trading?
Although a successful opposition does not automatically prohibit continued use, ignoring the potential infringement risks could be expensive.
If the opponent believes your ongoing activities infringe its registered trade mark, it may send a formal letter before action demanding that you cease using the brand.
If the dispute cannot be resolved, the opponent may commence court proceedings.
Depending on the circumstances, remedies for trade mark infringement may include an injunction, damages or an account of profits, orders concerning infringing goods and a contribution towards legal costs.
In more serious cases, an injunction could require you to stop using the brand altogether.
For an established business, this could involve changing its website, social media accounts, packaging, advertising and other materials.
It is therefore important to consider the commercial consequences of continuing to trade under a potentially infringing brand.
The fact that the UKIPO has not ordered you to stop using your brand should not be mistaken for confirmation that your continued use is legally safe.
9. Should I simply change my brand name?
Rebranding may sometimes be the most commercially sensible option, particularly where the opponent has strong earlier rights and there is a substantial risk of infringement.
However, it should not necessarily be your first reaction.
Before abandoning a brand in which you have invested considerable time and money, it is worth obtaining a professional assessment of your legal position.
That assessment should consider the strength and scope of the opponent’s rights, your own trading history, the precise reasons for the opposition decision and the realistic risk of enforcement proceedings.
There may be opportunities to negotiate a settlement, modify your branding or challenge the opponent’s rights.
Equally, if the risk of infringement is significant, an early decision to rebrand could prevent substantial future expense.
The important point is to make an informed decision rather than assuming that an unsuccessful application automatically means the end of your brand.
10. What should I do immediately after losing a trade mark opposition?
If your UK trade mark application has been successfully opposed, we would recommend taking the following steps.
First, carefully review the UKIPO’s written decision to understand precisely why your application was refused and whether the opposition succeeded against all or only some of the goods and services.
Second, consider whether there are grounds to appeal and whether the relevant deadline is approaching.
Third, investigate the opponent’s earlier rights, including the scope of its registration, its trading activities and whether any potential non-use issues arise.
Fourth, gather evidence of your own use of the brand, particularly if you were trading before the opponent acquired its rights.
Finally, obtain advice on the risk of continuing to use the brand and whether a commercial settlement may be achievable.
If you have also received a cease and desist letter, a formal undertaking or correspondence threatening infringement proceedings, these documents should be reviewed before any response is sent or commitments are made.
Conclusion: Losing your trade mark application does not necessarily mean losing your brand
A successful opposition can be disappointing, particularly where you have invested heavily in developing your business identity.
However, there is a significant legal difference between being refused a trade mark registration and being prohibited from using a brand name.
A successful opposition does not automatically require you to stop trading. Nevertheless, it may highlight a genuine conflict with another party’s intellectual property rights.
Whether you can safely continue using your brand will depend on the circumstances, including the strength of the opponent’s rights, your own history of use and the likelihood of trade mark infringement or passing off.
In some cases, businesses may have a legitimate basis for continuing to trade. In others, negotiating a coexistence agreement or considering a rebrand may be the more sensible approach.
The most important thing is not to panic, but equally not to ignore the potential legal consequences.
How can Lawdit Solicitors help?
At Lawdit Solicitors, our intellectual property team regularly advises businesses on trade mark disputes, opposition proceedings, infringement claims and brand protection.
We understand that a brand is often one of a business’s most valuable assets and that being told your trade mark application has been successfully opposed can create considerable uncertainty.
Our team can assist with reviewing UKIPO opposition decisions, assessing your right to continue using a brand, advising on potential infringement risks, negotiating coexistence agreements and representing clients in trade mark disputes.
If your trade mark application has been successfully opposed, or another business is demanding that you stop using your brand, contact Lawdit Solicitors to discuss your options before making any significant changes to your business.
