Opposing a trade mark application
When a trade mark application has successfully completed the examination process it is accepted and published in the on-line Trade Marks Journal. It is then open to any third party (an opponent) to oppose its registration on either absolute and/or relative grounds. It is possible to oppose the entire application or the registration of the mark for only some of the goods and services.
What are absolute grounds?
The 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 for which it is to be registered, or that it is generic for those goods/services, or otherwise non-distinctive and should therefore be free for everyone in that line of trade to use.
What are relative grounds?
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.
Who can oppose a trade mark application?
Anyone can oppose the application on absolute grounds but only the proprietor of an earlier trade mark or earlier right may oppose on relative grounds.
When can opposition be filed?
There is an initial two month opposition period (which can be extended by a further one month) which begins immediately after the date on which the application is advertised in the Trade Marks Journal.
For example, a trade mark advertised in the Trade Marks Journal on 11 April 2013 would have a latest date of 11 June 2013 by which to file an opposition on a TM7, or request an extension of the opposition period on a TM7a.
Details of the next steps you take if you wish to oppose.