Once you have filed your trade mark application, and it has been examined and published by the examiner at the UKIPO, it will be published in the trade marks journal for a 2 month period for third parties to oppose. A Notice of Threatened Opposition is a form (i.e. TM7A) that third parties who are concerned by your application may file if they’re thinking about filing a substantive opposition. As the name suggests, it’s a threat of an opposition as opposed to an actual opposition but it does have two useful outcomes for a potential opponent.
Once filed this automatically extends the trade mark opposition period in the UK from 2 months to 3 months for the party who has filed the TM7A. It does not extend the deadline for all parties. Secondly it acts as a warning to you, the applicant that an opposition is likely to follow (although the opponent isn’t actually bound to file one if they change their mind). This is important because if the opponent wants to claim its costs, assuming it succeeds in the opposition, it will need to show the Tribunal that it warned the applicant that an opposition was coming. However, the flip side of this, is that a third party may file the TM7A as a bluff tactic to make you think that a formal opposition is coming, and hence take steps to alleviate this concern, whether that be to withdraw the opposition, when in fact there was no intention to file a substantive opposition.
If you receive a threatened opposition there are a few options you can take:
- Negotiate co-existence: This is a good pre-emptive option if you want to try and avoid a full opposition and you’re confident that no real world confusion will actually be caused if your application is registered and used. A co-existence agreement is an agreement whereby parties agree certain trading rules and often limit how they will use their respective brands. Essentially if the parties can agree, then they can both co-exist without damaging each other or needing to litigate.
- Wait and see if the other side file a formal oppositions: This brings with it commercial risk as a third party may file a formal opposition, and you are then a party to tribunal proceedings. However, at this stage, you may wish to proceed with option 1 and try and negotiate a co-existence, or option 3, fight the opposition if you believe you have good grounds to defend, or even option 4, withdraw the opposition. It is important to note that if you then withdraw the opposition, you may be liable for the Opponent’s costs (subject to the cap).
- Fight the opposition: Obviously this is only a good option if you think you might win, however your legal advisors should be able to give you a good steer on your chances of success. It’s also a useful fallback option if co-existence discussions either fail or are not practically possible. This option should only be considered if you have a legal representative to advise you.
- Withdraw the TM application: This option should only really be considered if the opposition against you is very strong, but it does have the advantage of avoiding the time and possible expense associated with the above. Once your application has been withdrawn, you’ll be back to the drawing broad and so, before you file an alternative trade mark application, it would be highly advisable to have your legal representatives conduct a trade mark clearance search first. The aim of the clearance search will be to ascertain whether or not your new application is likely to generate an opposition. If it’s clear, then you can proceed with your lower risk option and hopefully end up with a registered trade mark at the end of the process.
