Trade Mark Oppositions & Objections

Brands & Trade Marks

Generally speaking, there are two kinds of objections your trade mark application may encounter, raised either by the relevant registry or by third parties.

Registry Objections

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.

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.

Finally

The options available 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. So, the message is ‘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 contact us and we will be happy to help.

Trade Mark Process

Whilst the specifics of the trade mark process vary from country to country, there are 5 main phases comprised in the trade mark registration and protection process.

  • This is arguably the most important phase of the trade mark protection process and perhaps the one which gets least attention in practice.

    Before you choose a new trade mark or create a new brand, you should check that you are not going to run into trouble with your new mark – either from the relevant trade marks registry or from someone who uses or owns the same or a similar mark.

    These issues can be avoided through careful preparation and searching, the cost of which is small by comparison with the costs you may potentially incur if you choose to use a mark which is not free for use.

  • Assuming your trade mark is cleared for use, the preparation and filing of the trade mark application needs to focus on the correct choice of classes and the careful drafting of the specifications of goods and services in the application to ensure that your interests are properly protected – neither too wide nor too narrow – to ensure your resulting registration protects your business but is not open to unnecessary attack.

    We prepare and file trade marks in the UK, the EU and anywhere else you need protection.

  • Once the trade mark application is prepared and filed, we will see it through the various stages it must go through in the relevant trade marks registry – including examination, advertisement and registration.

    If an application is opposed if objections are raised, we will inform you and, if agreed, defend your application and prepare and file evidence on your behalf to see the mark through to registration.

    Alternatively, you may need to object to trade mark applications filed by others, including your competitors, or seek the removal of their registrations from the relevant trade marks register.
    We can help with all of that and any other issues you may have in prosecuting your trade marks to registration.

  • Once your trademark is registered, it's crucial to monitor the market for any potential infringements. Our service can continuously scan selected trade mark registries to identify applications that may conflict with your marks. We provide detailed reports and expert analysis, enabling you to take swift action against any potential infringements. Whether it's a visual or phonetic similarity, our team ensures you're promptly alerted to any threats, helping you maintain the exclusivity and integrity of your brand.

  • Once the registration process is complete, the temptation is to forget about the trade mark and move on with other things – but that rarely happens, particularly with important trade marks.

    All too often competitors or other third parties will look to infringe trade mark rights in order to gain an advantage of some kind or, in some cases, to cause damage to your brand.

    There’s little point in going through the process and cost of trade mark registration if the resulting registration is not enforced. We can help you protect and enforce your trade mark rights in the UK, the EU or further afield if needed, including litigation and injunctions where applicable. We can operate a watching service, on a worldwide basis if needed, to ensure you are notified of any applications which may threaten or dilute your trade mark interests.

Recent Work

Acting for defendants in an Intellectual Property & Enterprise Court (IPEC) claim concerning trade mark infringement, passing off and copyright infringement.

Acting for a software owner in a major contract negotiation with the leading European media company.

Acting for a software owner in a dispute concerning copyright infringement and or illegitimate use of and access to licensed software.

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