17 Jul 2015Generally speaking, there are two kinds of objections your trade mark application may encounter. The lesson in each case is not to panic and not to ignore them. They are usually capable of being overcome if you invest a little time and effort in understanding them.
The first kind of objection is one raised by the relevant trade mark registry (Registry). The second is one raised by third parties who may be concerned that your application clashes or conflicts with their own trade mark interests.
Let’s look at each in turn.
Objections raised by the relevant Registry are likely to be based on ‘absolute grounds’, i.e. concerns over the fundamental suitability of your trade mark. Perhaps the most common objection of this type is that the mark is “descriptive” of the goods and/or services you have applied for. In that case, the Registry will push back and look to reject the application if you cannot convince them of the merits of your application.
If you encounter a Registry objection, all is not lost. It is quite possible to convince the Registry of the merits of your application, so don’t assume that simply because an objection has been raised your application has no chance of success.
The options available to try to circumnavigate the Registry objections are too varied to go into here but may, for example, involve a variation of the classes or specifications you have applied for or perhaps the submission of arguments regarding the distinctiveness of your trade mark, especially if you have used that mark for several years or more. There are options, so don’t see a Registry objection as final. See it rather as an opportunity for you to get around the objections raised and to try to drive your application through to registration using all of the arguments at your disposal.
Third Party Objections
The second and perhaps the most common form of objection you are likely to face is from third parties who consider your trade mark may conflict with their own trade mark interests.
The third parties may contact you directly with their concerns or, alternatively, they may file a formal opposition to your application, which will set in motion a formal process at the Registry concerned, to allow each party to have its say and provide a process whereby the Registry can determine which trade mark rights should prevail. There’s also an option in the UK for third parties to indicate their intention to oppose your application and thereby request that the opposition period (normally 2 months) is extended by a further month. That is done by the filing of a form TM7a at the UK IPO, which you should again look at as an opportunity to try to resolve the issue before formal opposition becomes necessary.
Again, don’t despair if you receive an objection or opposition of this kind. Most are capable of being resolved by agreement, so that you can be spared the reasonably expensive and fairly slow process involved in a formal opposition. If formal proceedings are necessary, we can help with the entire process but in the majority of cases it is possible to overcome those objections or to find a suitable way around, for example by reaching a compromise with the opponent, perhaps allowing the parties to co-exist on a territorial basis or by agreeing on restrictions in the goods/services which each offers. Again, the options are too numerous to go into here, and each case has to be looked at individually to find the best options, but there are certainly options available if you receive an objection or threatened objection from a third party.
So, don’t panic if you receive an objection. Instead, be creative and explore ways and options for getting around the concerns which have been raised. Also, don’t ignore an objection or threat of opposition because if you do it may indicate to the Registry or the third party concerned that you have no interest in exploring variations to your application or other options, such as settlement.
If you need any further help or support with regard to trade mark oppositions or trade mark objections, please call us or fill in the enquiry form below, and we will be happy to help.