Receiving notice that somebody has opposed your UK trade mark application can be concerning, but an opposition does not automatically mean that your application will fail. The right response depends on the grounds relied upon, the similarity between the marks, the goods and services involved, and the commercial position of both parties.

In this article: when an opposition can arise, what a notice of threatened opposition means, what happens after a formal opposition is filed, and the practical options available to an applicant.

When can somebody oppose a UK trade mark application?

Once a UK trade mark application has passed examination, it is published in the Trade Marks Journal. Publication begins an initial two-month opposition period during which a third party may challenge the application.

A potential opponent can also file a notice of threatened opposition, extending the opposition period by one month. This does not itself start formal opposition proceedings, but it gives the potential opponent additional time to decide whether to proceed.

This publication stage is one reason registration is not immediate. Our article on how long UK trade mark registration takes explains the wider timetable.

Why might a trade mark application be opposed?

Oppositions may be based on relative grounds, such as an earlier trade mark or earlier right that is said to conflict with the new application. Depending on the circumstances, an opposition may also rely on absolute grounds concerning the mark itself.

Similarity is not assessed by looking only at whether two names contain the same word. The marks, relevant goods or services and the legal grounds relied upon all matter. This is why carrying out an appropriate trade mark search before filing can help identify potential conflicts at an earlier stage.

What is a notice of threatened opposition?

A notice of threatened opposition gives the potential opponent an additional month beyond the initial two-month opposition period. It does not commit that party to filing a formal opposition.

That extra period can sometimes provide a useful opportunity for the parties to communicate. Depending on the dispute, they may be able to clarify their respective activities, consider limitations to the specification, or explore whether an agreed solution is commercially sensible.

What happens if a formal opposition is filed?

If a formal opposition is filed, the UK Intellectual Property Office will notify the applicant. The opposed part of the application cannot proceed to registration until the opposition has been resolved.

The applicant then needs to decide whether to defend the application, seek a negotiated resolution, amend or limit the application where appropriate, or withdraw some or all of it. You can read more about the process on our Trade Mark Opposition page.

Can an opposition be settled?

Yes. Not every opposition needs to proceed all the way to a tribunal decision. In suitable cases, parties may reach an agreement about the scope of goods or services, the way the respective marks will be used, or another practical arrangement.

Whether settlement is appropriate depends on the strength of the respective legal positions and the commercial objectives of the parties. An agreement that appears convenient in the short term should also be considered against the applicant’s future plans for the brand.

Should you defend the application?

There is no single answer. Before deciding, it is sensible to assess the opponent’s earlier rights, the similarity of the marks, the overlap between the goods and services, evidence that may be relevant, likely costs and the commercial importance of the application.

Where a conflict could have been identified before filing, the dispute may also illustrate the value of professional assistance with trade mark registration and clearance work at an early stage.

What should you do after receiving an opposition?

Start by checking exactly what has been filed and the deadline for responding. Do not assume that the opponent’s allegations are correct, but equally do not ignore the notice. The application, earlier rights and relevant goods and services should be reviewed carefully before deciding on a response.

Where the brand is commercially important, obtaining advice early can help preserve the available options and avoid decisions being made simply because a procedural deadline has been missed.

Final thoughts

A UK trade mark opposition is a formal dispute, but it is not automatically the end of an application. Some disputes can be resolved commercially, while others require a substantive defence. The important point is to understand the grounds, deadlines and commercial consequences before choosing a strategy.

If you are preparing a new application, our guide to UK trade mark registration costs may also help you plan the registration process. If you need advice about an opposition or proposed application, contact Corpinal IP.