Any person can file an opposition against a trademark application within 2 months from the date of publication of the said mark.
Procedure for trademark opposition:
- Notice of Opposition: The Opponent must file a Notice of Opposition or a Notice of Threatened Opposition with the UK Intellectual Property Office (UKIPO). The standard deadline is 2 months from the date of publication. However, it can be extended by a period of one (1) month by filing a Notice of Threatened Opposition before the deadline.
- Admissibility Check: UKIPO reviews the opposition for procedural compliance and verifies fee payment. If deemed admissible, UKIPO sends a copy of the opposition notice to the trademark applicant.
- Cooling-Off Period: Upon receiving the notice of opposition, the applicant has two months to submit a defence. During this period, both parties may jointly request a cooling-off period, which suspends the proceedings for seven months. This suspension can be extended to nine months in aggregate if both parties agree. If no defence is filed and no cooling-off period is requested, the application may be deemed abandoned unless the applicant provides exceptional justification.
- Submission of Defence by the Applicant: The Applicant’s defence must address all points raised in the opposition. If the opponent’s trademark has been registered for more than five years, the applicant may also request proof of use of the earlier mark. This ensures the opponent demonstrates genuine use of their trademark in commerce.
- Evidence Submission: Following the defence, the Opponent has two months to submit factual evidence supporting their opposition, including proof of use if requested. Legal arguments are not permitted at this stage. Once the opponent submits their evidence, the applicant has two months to respond with their own evidence. Upon submission of applicant’s evidence, the Opponent may then file a final reply within one month, although this step is optional. If no reply is submitted, the evidence stage concludes.
- Hearing and Written Submissions: After evidence rounds are complete UKIPO will allow 14 days for parties to request a hearing or 28 days in which to submit legal arguments in the event there is no hearing. If a hearing is arranged the parties must file legal arguments in 2 working days in advance of the hearing date.
- Decision: UKIPO typically issues a decision within two to three months following the final submissions or hearing.
- Appeal: Once the decision is communicated, either party may appeal within 30 days. Appeals can be made to the Appointed Person or to the High Court, depending on the nature and complexity of the case.