How to oppose a UK trade mark application

When you can oppose

Every accepted UK trade mark application is published in the Trade Marks Journal, which the UK IPO updates each week. Publication opens a two-month window in which anyone with grounds can object. After that window closes without an opposition, the mark goes on to registration.

If you need more time, file Form TM7A, a notice of threatened opposition, before the two months are up. It's free, takes a few minutes online, and extends the opposition period to three months from the publication date. It also tells the applicant you have concerns, which sometimes leads them to narrow or withdraw the application before any formal opposition.

Miss the deadline and your options get harder and more expensive: you'd usually have to wait for registration and then apply to invalidate the mark.

Grounds you can rely on

Most oppositions are based on an earlier trade mark you already own. The Trade Marks Act 1994 sets out the relative grounds in section 5:

• Section 5(1): the new mark is identical to your earlier mark, for identical goods or services.
• Section 5(2): the marks are identical or similar and the goods or services are identical or similar, so there's a likelihood of confusion. This is the ground most oppositions rely on.
• Section 5(3): your earlier mark has a reputation, and the new mark would take unfair advantage of it or damage it, even for different goods.
• Section 5(4)(a): you don't have a registration, but you have goodwill in an unregistered name and use of the new mark would amount to passing off.

How the process works

The outline is the same for most oppositions, though the UK IPO's guidance is the place to check details and current forms:

• Check the publication date and work out your deadline: two months from publication, or three if you file a TM7A in time.
• Gather your evidence: your registration number, the goods and services it covers, and how the marks and goods compare.
• File Form TM7 online with your grounds and a statement explaining them, and pay the official fee.
• The applicant can defend by filing a counter-statement (Form TM8). If they don't defend, the application is usually treated as abandoned.
• Both sides can agree a cooling-off period to negotiate. Many disputes end here, with the applicant withdrawing or limiting the goods and services.
• If it isn't settled, both sides file evidence and a hearing officer decides, usually on the papers unless someone asks for a hearing.

What it costs

The official fee for Form TM7 is £100 if you rely only on section 5(1) or 5(2) grounds, and £200 if you rely on other grounds too. The TM7A notice is free. Check GOV.UK for current fees before you file.

If the opposition is decided, the losing side is usually ordered to pay a contribution to the winner's costs, set by a published scale rather than the full amount spent. If your earlier registration is more than five years old, you may be asked to prove you've actually used it.

Do you need a trade mark attorney?

You can file a TM7A and a TM7 yourself, and many straightforward oppositions settle early. If the applicant defends, the evidence rounds and arguments about similarity get technical, and a chartered trade mark attorney is usually worth the cost for anything valuable.

How Infringement Ninja helps

The hard part is noticing in time. Infringement Ninja checks each week's new UK applications against your marks by spelling, sound and the goods they cover, alerts you when one conflicts, shows the deadline counting down, and drafts the TM7A for you on paid plans.