When filing a trade mark application, many don’t want to think about what can happen if things go wrong and an opposition is filed. However, it is essential that you are aware of the process and are therefore in the know as to how an opposition will proceed.
Prior to filing an opposition in the UK, a party does have the opportunity to a Notice of Threatened Opposition. This puts the applicant on notice that you may oppose the application and extends the opposition period by one month allowing further time to consider filing an opposition.
With the UK process, both the form TM7 and the full arguments must be submitted before the end of the opposition/publication period. Once these have been processed, the UK Intellectual Property Office will check the opposition application for any issues. If there is any issues, the UKIPO will get in touch with the opposer to remedy these.
Once the opposition has been filed and processed, the UKIPO will send the opposition on to the applicant who then is granted a 2 month period to respond. If an applicant does not defend the oppsotion, the opponent will be successful and the application rejected. The opposer will have the opportunity to submit additional evidence and arguments in response to the defence if necessary.
Once the arguments have been submitted, both parties have the opportunity to request a hearing. This allows both parties to make submissions to the hearing officer and put forward their case. The Officer will then consider submissions and submitted evidence before its decision time.
Following the hearing or just the submission of all arguments, the hearing officer will make the decision. This will be sent to both parties in writing after a period of time. Both parties have the opportunity to appeal this if they have been adversely affected. The decision will also include a fee award by the UKIPO to the winning party which must be paid by the losing party. This is fixed on a scale and will depend on a number of factors.
If you have received a challenge against your application or you wish to challenge another’s application, get in touch with the Lawdit team today who will take the matter off your hands!