Objecting to other peoples trade marks and the legal costs
How to object and challenge someone else's trade mark and details of any legal costs involved.
When we accept a trade mark application we advertise it in our on-line journal. There is then a 2 month period (extendable to three months) in which parties may oppose its registration.
There are 2 ways in which you can object to a mark;
- Third party observations (non legal action)
- Opposing a trade mark (legal action)
At any point after we have accepted and published an application for registration, and before it is actually registered, anyone can make what we call ‘third party observations’.
You can tell us if you think that we accepted the application in error. You must bring to our attention any relevant facts of which we may not have been aware at the time we accepted the application.
Making a third party observation is not a formal legal action, and we are not bound to act on them. We may rely on evidence given in an observation to support any later objection to the application.
There are several ways to file third party observations with us.
Opposing a published trade mark
Opposition is the legal procedure that allows you to try to stop a published mark going on to become registered. You can oppose the entire application, or only some of the goods or services it covers.
Opposing under absolute or relative grounds
Absolute grounds cover defects in the trade mark itself. The most common reasons for opposing a trade mark application is that:
- the trade mark is descriptive of the goods and/or services
- that it is generic for those goods/services
- it’s non-distinctive and should be free for everyone in that line of trade to use
Relative grounds means that there exists an earlier trade mark or earlier right (which does not have to be registered) owned by the opponent with which the applicant’s trade mark would conflict if it were used.
Anyone can oppose an application on absolute grounds but only the proprietor of an earlier trade mark or earlier right may oppose on relative grounds.
Filing an opposition
There is an initial 2 month opposition period which begins immediately after the date the trade mark is advertised in the trade marks journal. You can extended this period by a further 1 month by filing an electronic form TM7a ‘Notice of threatened opposition’ within the initial 2 months, beginning immediately after the advert date. The TM7a can only be submitted on-line and there is no fee payable with this form.
For example, a trade mark advertised in the journal on 11 April 2013 would have a latest date of 11 June 2013 by which to file an opposition on a form TM7, or request an extension of the opposition period on a form TM7a.
Filing a TM7a does not commit you to opposing the application, but you should not file one unless you are seriously considering doing so.
If you want to oppose the registration of the trade mark without any extension of the time period allowed, then you can file a TM7 ‘Notice of opposition’ with the appropriate fee. The time during which the TM7 must be filed is 2 months beginning immediately after the date on which the application was published.
Any TM7 filed during the extended third month by parties other than those who have already submitted a TM7a will be refunded.
Further guidance on opposition is available.
Opposing using the fast track procedure
Contact the applicant
You should contact the applicant in writing, and tell them why you are thinking of opposing their application. You can get their address (described as an ‘address for service’) by searching the applicant’s details on the IPO website.
It helps everyone if you can settle your differences in a friendly way rather than starting formal opposition proceedings. We offer a mediation service at the IPO which can help you do this. Mediation is quicker and easier than going through the formal opposition process.
No costs will normally be awarded to successful opponents if they don’t give the applicant a chance to withdraw their application before filing the opposition, and the opposition goes undefended.
Opposition cooling-off period
A cooling-off period is extra time allowed for both sides in opposition proceedings to try to settle their differences without the need to go through the full legal procedure.
Cooling-off is only available in opposition proceedings.
This means that when we send the applicant the notice of opposition the parties have nine months to try and negotiate a resolution to the dispute before entering the adversarial stage of proceedings. The parties must agree to cooling-off and file a form TM9C during the two months allowed for the applicant to file their notice of defence. Either party can request an extension to the initial nine months cooling-off period by submitting a form TM9E. This will extend the cooling-off period by a further nine months to a maximum period of eighteen months. The request must include a statement confirming that the parties are seeking to negotiate a settlement to the opposition proceedings.
If the parties do not agree to cooling-off then the opposition proceedings continue as normal with the applicant filing their defence.
Cost awards in proceedings before us are contributory, not compensatory.
This means that the cost award is not going to cover all the costs of the proceedings. It will only provide a contribution towards the costs of the ‘winning’ party.
We use a published scale of costs and have discretion to determine the level of the award.
The costs awarded in Fast Track Oppositions are capped at £500 (excluding official fees). Further information can be found at Tribunal Practice Notice 2/2015 below.
For further information on cost awards in proceedings please see:
- Tribunal Practice Notice 2/2016
- Tribunal Practice Notice 2/2015
- Tribunal Practice Notice 6/2008
- Tribunal Practice Notice 4/2007
If you decide to withdraw your application after we have received an opposition you will have to pay costs to the opponent. But, if you have demonstrated that proceedings were launched against you with no warning, giving you no chance to negotiate or reach a compromise without legal proceedings then there will be no award of costs issued against you.
If you decide to defend your application against the opposition and lose the case, you will be required to pay costs to the opponent.
If you are successful in defending your application you are unlikely to recover all your costs as any award we make is normally based on a set scale.
Enforcement of awards of costs by the European Union Intellectual Property Office (EUIPO)
Article 86(2) of the European Union Trade Mark Regulations (previously Article 82(2)) provides that decisions made by EUIPO shall be registrable and enforceable in the United Kingdom.
Article 86 states:
Enforcement of decisions fixing the amount of costs
Any final decision of the Office fixing the amount of costs shall be enforceable.
Enforcement shall be governed by the rules of civil procedure in force in the State in the territory of which it is carried out. The order for its enforcement shall be appended to the decision, without other formality than verification of the authenticity of the decision, by the national authority which the Government of each Member State shall designate for this purpose and shall make known to the Office and to the Court of Justice.
When these formalities have been completed on application by the party concerned, the latter may proceed to enforcement in accordance with the national law, by bringing the matter directly before the competent authority.
Enforcement may be suspended only by a decision of the Court of Justice. However, the courts of the country concerned shall have jurisdiction over complaints that enforcement is being carried out in an irregular manner.
In the United Kingdom the Secretary of State is the competent authority referred to in Article 86(2) and has delegated his powers to the Officers of the Intellectual Property Office (IPO).
Upon request, the IPO will verify the authenticity of a decision fixing costs made by the EUIPO for this to then be enforced in the UK.
Requests should be sent to:
Intellectual Property Office
Trade Marks and Designs Tribunal
Opposing a registered trade mark
Once a trade mark has been registered there are several different forms of legal action you can take to challenge it.
Invalidation is the legal procedure, which allows anyone to try and remove a trade mark from our register as if it had never been registered. You can apply to remove the entire registration, or only some of the goods or services that it covers. You will need to send us a form TM26(I).
Further guidance on invalidation is available.
Revocation is the legal procedure that allows anyone to try and remove a trade mark from the UK register. You can apply to remove the entire registration, or only some of the goods or services that it covers.
Usually, you would apply to revoke a trade mark on the grounds of non-use, but there are other grounds for revocation. You will need to send us a:
- form TM26(N) ‘Application to revoke a registration or a protected international trade mark (UK) for reasons of non-use’ and statement of grounds
- form TM26(O) ‘Application to revoke a registration or a protected international trade mark (UK) for reasons other than non-use’ and statement of grounds
Further guidance on revocation is available.
Rectification is the legal procedure which allows anyone to apply to correct (or rectify) an error or an omission that has been made in the recorded details of a registered trade mark. You will need to send us a form TM26(R)
Further guidance on rectification is available.
Anyone, other than the proprietor, who claims to have an interest in a registered trade mark may apply to become involved (in legal words ‘intervene’) in post registration legal actions. You will need to send us a form TM27.
A person with an interest in a registered trade mark may be:
- a subsidiary or related company of the proprietor or licensee of the proprietor who uses the mark itself
- a new owner of the trade mark who has not yet recorded their ownership in the register
Monitoring trade marks using eAlerts
You can track a trade mark application or registration and receive email notifications about specific events by registering for eAlerts. Find the trade mark you want to track by using our online search services.
Legal professionals who specialise in Intellectual Property (IP) are useful in helping you to obtain and defend you IP rights. Details of professionals in your area can be obtained from any of the following organisations:
- Chartered Institute of Trade Mark Attorneys
- Chartered Institute of Patent Attorneys
- Law Society can provide details of suitable solicitors in your area
- Bar Council can provide details of barristers licensed for public access
- The National Endowment for Science, Technology and the Arts provide a useful handbook on invention and innovation
There are many other organisations geared to helping inventors, especially lone inventors, to bring their ideas to market, and to provide advice on finding financial help. For example, The Institute of Patentees and Inventors is a non-profit making organisation that helps lone inventors.
Mediation is a way of resolving disputes without going to court. It is cheaper and quicker than litigation and the outcome is usually beneficial to all parties.
Mediation allows you and the opposing party to talk about the dispute with the help of an independent person, a mediator. The mediator’s role is not to make a decision on the dispute but to help both parties find a solution that they are happy with.
The IPO can mediate face to face and over the telephone. The service can help you resolve trade mark opposition and invalidation proceedings on relative grounds. However there are also other mediation providers that can help.