Whenever an application is made to register a trade mark, third parties will have an opportunity to oppose that application. Normally, once a trade mark application has passed the examination process and been published, parties are then open to oppose that application for a fixed period of time. Opposing parties can file an opposition through the UK system of the Intellectual Property Office (IPO) or the Community trademark (CTM) system.
There are a number of differences in the two forms of opposition proceedings.
Trademark Applications - Opposition Time Limits
In the UK, where applications are put before the IPO, the opposition period lasts for two months, extendable to three months. CTM applications that have been accepted and published online by the Office for Harmonization in the Internal Market (OHIM) can be subject to opposition for a period of three months.
Lodging an Opposition
In both systems, the opposition is subject to an official fee.
IPO oppositions can be based on absolute grounds where there is an actual defect in the trade mark or on relative grounds, where there is a conflict with an existing trademark, and may be filed by anyone. Oppositions against a CMT application may only be based on relative grounds, and can only be submitted by the holder of relative rights.
Whether it is made under the IPO or the OHIM rules, opposition will be automatically rejected if the mark upon which the opposition is based has not been used during the last five years.
Defending the Application
In the UK, the applicant has two months from the filing of the opposition to file a counter-statement supported by evidence. Further to this, the opponent can be given two months to reply, and the applicant can be given a further two months to cross-claim.
In the CTM system, the applicant has six months from the date of the opposition to file evidence with arguments in support of its application.
Cooling-off Periods
Cooling-off periods exist under both the IPO and CTM systems. This is effectively a period that enables the parties to resolve any opposition between them without recourse to the full opposition process.
In the IPO system, the cooling-off period is determined by agreement between the parties before expiry of deadline to file the defence and can last up to 18 months.
Under the OHIM regime, the opposition admission is followed automatically by a two-month cooling-off period, extendable to a maximum of 22 months, upon parties’ agreement. In the event of amicable settlement during this period, the official fee is refunded to the opponent.
Concluding Opposition Proceedings
In the event of litigation, both IPO and OHIM proceedings can take up to two years to reach an initial decision, which is subject to appeal. In both jurisdictions, the successful party can apply for an award of costs.
If you need advice regarding your intellectual property, Rollingsons has experienced lawyers who can assist you. For more information please contact James Crichton via e-mail jcrichton@rollingsons.co.uk or by telephone on 0207 611 4848.
