FAQs: Trade Mark Opposition

A trade mark opposition is a process in which one party objects to the registration of another’s trade mark. Any earlier rights holder can file an opposition with the relevant registering authority. Oppositions are usually filed before the trade mark has been officially registered, typically during the publication period. If successful, the opposition will stop the application from being registered.

There are various grounds for opposition, depending on jurisdiction, but the following are the most common:

1. The trade mark is identical to an earlier trade mark, and the goods/services are identical.

2. The trade mark is similar to an earlier trade mark; the goods/services are similar (or identical), and there is a likelihood of confusion on the part of the public.

3. The trade mark is identical or similar to an earlier trade mark with a reputation such that use of the later trade mark will, without due cause, take unfair advantage of or be detrimental to the distinctive character of the earlier trade mark. This ground applies even if the goods/services are different

4. The trade mark is similar to an earlier mark that is not registered but can be asserted because it was used first and has a reputation. This is typically only available in common law jurisdictions

5. The trade mark can be prevented due to other laws, like those around Protected Designation of Origin (PGOs) or Copyright

6. The trade mark has been applied for in bad faith

Given these potential grounds, it is important to conduct investigations and trade mark searches before you choose a particular trade mark to ensure that it is free to use and register.

Once an opposition is filed, the trade mark applicant will be given an opportunity to respond. Usually, evidence rounds follow before a decision is taken (either from the papers or following an oral hearing). If the opposition is successful, the application for registration will be rejected by the Trade mark Office. Various appeal options usually apply.

If the opposition is unsuccessful, however, the application will proceed to registration.

The length of time it takes for opposition proceedings to reach a conclusion will vary, depending on different factors. Jurisdictions move at different speeds, and filing requirements vary. The complexity of the case, as well as the volume of evidence, will have a significant effect. Appeals can also extend the process. Generally speaking, the process could take anywhere between six months and several years.

It is important to note that trade mark oppositions can be costly and time-consuming, so it is best to get advice from an experienced attorney before proceeding with this course of action.

If your trade mark is opposed, it is crucial to take the necessary steps to address the issue in a timely manner. Failure to respond will often cause you to lose by default. This will include getting initial legal advice (especially around potential usage risks), responding to any evidence presented by the opposing party and filing the necessary documents with the trade marks office.

Even if it is too late to salvage the application, it may be beneficial to understand why the opposition was successful and to consider steps to prevent similar issues from occurring with future applications. This could include formulating a brand selection and clearance process, together with a filing strategy.