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Trade mark applications in the UK often proceed to registration relatively smoothly if clearance checks have been completed before the application has been filed.
Issues can arise where applications are refused by an Examiner for absolute grounds, or more commonly, when another party tries to oppose the application.
If you are reading this blog, there is a good chance you have received a Notice of Threatened Opposition (Form TM7A) or a Notice of Opposition (Form TM7) from a party trying to oppose your application. We have set out below a few points to be aware of so you can focus on running your business again as soon as possible.
Relative grounds and absolute grounds
Once you have filed a trade mark application in the UK, an Examiner at the UK Intellectual Property Office (“UKIPO”) will examine it before they allow it to be published.
Relative grounds
During the examination period the Examiner will check the register to see if there are any earlier identical or similar marks that could have grounds to oppose your application. Relative grounds include:-
- There is a likelihood of confusion between the trade mark applied for and the earlier registered trade mark because the Examiner believes the marks are identical or similar (and cover identical or similar goods and services); and
- The earlier trade mark has a reputation in the UK (i.e. “Apple” for computers) and that reputation would be damaged or unfairly taken advantage of by the newly filed trade mark.
If the Examiner identifies any earlier marks as above, they will simply write to the owners of the earlier marks at the time the application is published to flag that your application has been filed, and they may wish to oppose the application.
Absolute grounds for refusal
The Examiner will also consider if there are any “absolute grounds” to refuse the application under section 3 of the Trade Marks Act 1994. These objections are based on the inherent nature of the trade mark itself, instead of conflicts with earlier marks.
Examples of absolute grounds include:
- Descriptive marks: Using terms that merely describe the product’s quality, quantity, purpose or location (i.e. “Sussex Hot Coffee” for coffee);
- Generic marks: Using words that are too descriptive of the goods and services claimed (i.e. “PUB” for a venue selling alcohol);
- Marks that are contrary to public policy or morals (offensive marks); and
- Protected emblems like national flags and coats of arms (we have acted in several problematic cases where clients have filed applications where the Union Jack or royal coat of arms have been incorporated into their logos).
If your application is refused under absolute grounds, the UKIPO will write to you setting out the reason for refusal and allow you a couple of months to try and overcome the refusal. We are always happy to help clients where possible when this happens.
Post-publication (the opposition period)
Once a trade mark application has been published by the UKIPO it remains open for opposition for 2 months. The 2-month period may be extended to 3 months if a party files a Notice of Threatened Opposition (Form TM7A) during the initial 2-month window.
In any event, a party who wants to try and stop a trade mark from being registered must file formal opposition (Form TM7) against the application during the opposition period.
Options available once you have received a Notice of Threatened Opposition (Form TM7A)
The fact that a Notice of Threatened Opposition has been filed does not necessarily mean your trade mark application will be opposed.
However, if you wish to avoid the possibility of a formal opposition, you have the following main options:
- Withdrawal
- Entering into a Co-Existence Agreement
- Defending the opposition
Withdrawal:
You can withdraw your application before any formal opposition is filed. If you do this, you will not need to pay anything towards the opponent’s legal costs. You should then ideally obtain legal advice before filing any further trade mark applications.
Exploring co-existence:
A Form TM7A is often sent alongside a “without prejudice” letter from the opponent which sets out the potential co-existence terms the opponent would be willing agree to. Letters of this nature will generally ask the applicant to agree to some of the following points:
- Narrowing the scope of the goods and services within the application (i.e. deleting various goods and services from the application);
- Adding written limitations to the goods and services (i.e. expressly stating some of the goods and services will not be used in particular industries etc);
- Requesting that the mark applied for is always used alongside another distinctive logo and never by itself (as to reduce the likelihood of confusion by the average consumer); and
- That the applicant will never use their mark in practice except in clearly agreed and defined terms.
When negotiating co-existence terms, it is prudent for you to obtain legal advice early on so the merits of your position can be assessed holistically with your commercial objectives in mind. It is important for brand owners not to concede too much unnecessarily. The terms of a co-existence agreement will often bind you (and your successors) indefinitely.
These types of agreements can take the form of long formal agreements, or a page or two legal undertakings.
It is important to ensure the scope of any agreement is negotiated carefully. In particular, you will need to disclose the terms of any Co-Existence Agreement to potential investors or buyers. With this in mind, a few considerations to be aware of within co-existence agreement are:-
- The territorial scope of the agreement (i.e. whether or not any terms will limit your operations and growth plans overseas – this is very important if you are looking to license or sell your brand oversees in the future);
- Whether or not you may need to destroy or rebrand your stock during a particular period; and
- That each party bears their own legal costs (you do not want to be unexpectedly on the hook for the opponent’s legal costs after agreeing to various concessions).
Defending the opposition:
Once the opponent has filed their formal opposition the UKIPO will send you or your legal representative a copy. You will then be better placed to understand the legal grounds they rely upon. You will typically have 2 months to then file a Defence and Counterstatement (Form TM8) setting out your defence.
Cost
At Crate Jacobs we provide clear transparent fee estimates so our clients can manage their budgets accordingly.
The good news with UK trade mark opposition proceedings is that costs are capped, and the “winner” is ordered to pay the “losers” costs on a fixed scale. However, this will mean parties do not recover all of their legal fees even in the event they win.
How Crate Jacobs can help
We pride ourselves on getting to know our clients and their long term commercial objectives so we can provide tailored, pragmatic and cost-effective legal advice.
We have many years of experience in helping our clients defend oppositions. Likewise, we also help our clients robustly oppose trade mark applications in order to protect their brands in the UK and their other key markets.
If your trade mark application has been opposed and would like an initial no-obligation call to assess the merits of your position, please do not hesitate contacting us (info@cratejacobs.com, 01737 339 618).
Daniel Crate
Intellectual Property Solicitor & Founding Partner
Crate Jacobs