Overview

Obtaining a trade mark registration is not an automatic right for companies or individuals. It first requires an application to be made before the UK Intellectual Property Office (UK IPO), which is assessed by the UK IPO before being published once the application has been provisionally accepted by the nominated examiner.

Therefore, it can be frustrating for an applicant who believes it has overcome the initial examination hurdle, to then face a potential opposition from a third party after the UK IPO has published it in the trade marks journal. An opponent may file a threatened intention to oppose your application (TM7A) within 2 months of publication, and/or file a formal opposition (TM7) usually on the basis that it believes that to allow your trade mark to be granted registration will be detrimental and potentially damaging to its own trade mark rights and business.

Whilst there is merit for some to oppose new applications it is important to first understand your own rights and whether there is a likelihood of an opponent being successful should the opposition progress to the UK IPO Tribunal.

Trade Marks Act 1994

Approach

Trade mark applicants ought to have first undertaken due diligence within its sector and the wider market to identify potential conflicts. It is not uncommon for other businesses to be using or who may have already registered their own trade mark(s) which may be similar or even identical to the trade mark you wish to register. Unless you intend to register a wholly unique and distinctive trade mark you need to be prepared for opposition by another who may claim conflicting and prior rights to your own.

Sabel BV v Puma AG (C-251/95) [1997] E.C.R. I-6191 (11 November 1997)

Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (C-342/97) EU:C:1999:323 (22 June 1999)

Challenges

Whether you are the applicant facing opposition or you wish to oppose a potentially conflicting trade mark application, you will need to assess your rights and the strength of the opposition (non-exhaustive):

*As an Applicant facing opposition*	*As the trade mark Opponent*

Assess your trade mark and the products it seeks to protect as compared with the Opponent’s trade mark.	Assess the strength and legitimacy of your trade mark(s) (whether or not registered) and products, against the application and intended use to be made by the Applicant

Do you have pre-existing rights, ie have you used your trade mark in the course of business, within the UK market, for your products (as reflected in your application), prior to filing your application?	If your opposition is based on your registered trade mark, is your registration more than 5 years old?

If you have potential pre-existing rights, do those rights pre-date the rights claimed by the Opponent?	If you are relying on your registered rights, did you make use of your trade mark prior to its registration, ie used in the course of business, within the UK, for the products identified in your registration?

Where you do not have pre-existing rights and you rely on your application, can you counterclaim that the Opponent’s rights are defective and/or weak?	If you are relying on your unregistered trade mark, are you able to demonstrate that you have sufficiently established your rights within the UK market?

You may consider revoking the Opponent’s registered trade mark	Beware that your registered trade mark may be vulnerable to revocation

Consider settlement by way of amendment to your specifications to mitigate against confusion, or to clarify and distinguish your market from that of the Opponent	Consider settlement by way of amendment to the Applicant’s specifications to mitigate against confusion, or to enable the Applicant to clarify and distinguish its market from your own

Where appropriate and proportionate to do so, it may be feasible to agree ‘co-existence’ with the Opponent	Where appropriate and proportionate to do so, it may be feasible to agree ‘co-existence’ with the Applicant

Consider alternative commercial opportunities	Consider alternative commercial opportunities

In the event you have strong and/or established pre-existing rights, are these sufficiently valuable to warrant protection and defence of your application, or is re-branding a pragmatic and more cost-effective solution?	In the event you have strong and/or established pre-existing rights, are these sufficiently valuable to warrant protection and to justify opposition, or is re-branding a pragmatic and more cost-effective solution?

What other IP rights do you have?	What other IP rights do you have?

It is worth noting that a registered trade mark can be revoked, especially if it has not been properly used by the trade mark owner. Similarly, if you are able to demonstrate earlier prior rights to that of the Opponent, not only will you be able to rely on established case law to support your application, but you may also have sufficient rights to revoke (or partially revoke) the Opponent’s registered trade mark.

Should the Opponent rely on its perceived unregistered rights, then it will be up to the Opponent (rather than you) for it to substantiate its rights and provide you with the requisite evidence that case law has endorsed as suitable. Claiming unregistered rights can be a considerable challenge. Therefore an understanding of what evidence is permitted, relevant, and probative is essential for a successful defence or opposition on this ground.

Perry v Truefitt (1842) 5 Beav. 66
Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12
Phones 4u Limited (1) Caudwell Holdings Limited (2) v phone4u.co.uk Internet Limited (1) Abdul Heykali (2) and New World Communications (Southern Division) Ltd (3) [2006] EWCA Civ 244, 19 May 2006

Experience

Since 2003 I have successfully defended client’s trade mark applications against opposition, revocation, and cancellation. I have also supported clients who have been capable of enforcing their rights against conflicting applications or pre-existing registrations. There are of course circumstances that may encourage a suitable negotiated settlement to allow each party to operate in the market without conflict. Ultimately where settlement is not possible or the perceived conflict is considered high risk and damaging, then a robust defence or enforcement is necessary for the protection of your rights.

I am also experienced with supporting international clients in relation to trade mark rights in overseas markets and foreign territories. This is important considering that Passing Off and/or unregistered rights are not always recognised in some parts of the world. Therefore it can be critical to put in place an effective trade mark strategy for the protection of your business and products, in order to accommodate the different jurisdictions that may be relevant to you.

Potential Outcomes

Call To Action

Successful defence of your application to allow it to be granted registration by the UK IPO.
Successful opposition of a conflicting application, which solidifies your own rights and strength in the market.
Avoid unnecessary and disproportionate opposition and associated costs;
Explore possible settlement, alternative commercial opportunities, and potential co-existence.

L’Oréal SA & others v Bellure NV and others, Case C-487/07

Marca Mode CV v Adidas AG and another, Case C-425/98)

Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, Case C-39/97

UK IPO Tribunal Practice Note – Annex A: Scale of Costs

Use an experienced and qualified lawyer when opposition arises;
Do not engage with opposition without first obtaining legal advice;
Consider risks to your business and brand, and the cost of opposition versus potential re-brand or settlement;
Review the evidence, claims of prior rights, and potential infringement to ensure you understand your legal rights;
Opposition is not necessarily the end game, and proportionate settlement or alternative commercial solutions can often be achieved to the benefit of both parties;
Do not be afraid to assert your rights where it is appropriate and suitable for you to do so.