UKIPO Opposition Procedure

27 November 2009

By Ben Evans

This article takes a brief look at the opposition process for UK trade mark applications.

Once a UK trade mark application is accepted by the examiner at the UKIPO the mark will be published and the opposition period begins. During this period oppositions can be made by third parties. In the UK the period for opposition is an initial two months, however if a party that is intending to oppose then they can file a TM7 within the initial two month period, this extends the period by a further month. In order to file an opposition the opponent must file a statement of grounds and pay the official fee, the statement of grounds simply is the grounds on which the opposition is based (as a note no evidence is filed at this stage).

The applicant then has two months to file a counter statement which will deny the grounds laid out in the statement of grounds. If the opposition is based upon the relative grounds i.e. based upon an earlier mark (either registered or unregistered) then the IPO will give a preliminary indication on the strength of the opposition. This then gives the parties the option to discontinue the proceedings.

An 18 month cooling off period can be applied for by the parties (in agreement) during which time the opposition proceedings halt with a view of negotiations taking place.

Assuming that no cooling off period has been entered into the opponent will have three months to file their evidence, if no evidence is supplied then the opposition is considered to be withdrawn. Following this the applicant will then have three months to file their evidence, should they need to the opponent will then have a further three months to file any further evidence in response.

A decision will then be made on the papers filed, alternatively an oral hearing can take place. Appeals can then be filed either to the Appointed Person or to the High Court.

Ben Evans is a trainee solicitor specialising in intellectual property and information technology law.