Trade mark opposition proceedings - defences which don't work
Written by Aasim Durrani on 27 March 2014« Return to Reading Room
It comes as no surprise to many practitioners that some trade mark owners will seek to go it alone rather than pay for privilege of having a professional on board to fight on their behalf. This is more common when it comes to applying for a trade mark rather than opposing the registration of an application. This article seeks to set out some of the common mistakes that applicants make when faced with an opposition and without a trade mark specialist on board.
"I have an even earlier trade mark than the opponent"
An inexperienced applicant who is opposed may seek to turn the tide against the opponent by claiming that he or she is the registered proprietor of a trade mark which predates the opponent's mark. Unfortunately, it isn't the case in opposition proceedings that one of the applicant's marks can come to the rescue of the application under attack. The correct course of action is to apply to invalidate the opponent's trade mark. If successful, the invalidation will remove the obstacle to registration for the mark applied for.
"I've been using my trade mark before the opponent registered their trade mark"
It is somewhat understandable that an applicant facing opposition proceedings will want to rely on prior use of their trade mark to fend off an attack against their application. This position was considered in Ion Associates Ltd v Philip Stainton and Another, BL O-211-09. The appointed person rejected such a defence as being "wrong in law". As per the above, the appointed person in that case stated that the correct procedure for an applicant was to oppose or apply to invalidate the opponent's mark.
"There's no confusion between the marks in the marketplace"
This argument might appear to have some merit on the face of it, although it will seldom succeed in seeing off an opposition based on likelihood of confusion. In Compass Publishing BV v Compass Logistics Ltd  RPC 41, Laddie J held that any such argument did not take into account the possibility of notional use taking place or the trade mark being used. Indeed, it is possible for a trade mark to be registered without actually being used (although a continuous five year period of non-use may render the mark liable to invalidation).
There really is no substitute for having an experienced practitioner on your side to fight off an opposition. The scenarios above also demonstrate the importance of looking ahead, registering early and keeping an eye out for competitors who may seek to undermine the growth of your brand and, by extension, your trade mark.
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