When a trademark application has successfully completed the examination process, it is accepted and published in the online Trademarks 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 and relative grounds?
The absolute grounds, under Section 3 of the Trademarks Act 1994, cover defects in the trademark itself. The most common reasons for opposing a trademark application on absolute grounds are that the trademark is descriptive of the goods and/or services for which it is to be registered, 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.
Relative grounds, under Section 5 of the Trademarks Act 1994, means that there exists an earlier trademark or earlier right (which does not have to be registered) owned by the opponent with which the applicant’s trademark would conflict if it were used.
When can you raise an opposition?
There is an initial two-month opposition period beginning immediately after the date of the publication of the trade mark in the Trademarks Journal.
How much does it cost to raise opposition?
The fees vary between countries. The official fees for filing the Notice of Opposition range between 100 and £200 ($100-250) in the United Kingdom and $600 per class in the United States. Additionally, the losing party will bear all following legal costs of the opposition procedure. The scale will reflect a variable amount for the preparation, filing and examination of forms and for the amount and relevance of any evidence filed.
What is the process of raising an opposition?
1. Notice of Trademark Opposition
Within four months of the first date of appearance, any person may file a notice of opposition to a trademark that appears in the trademark journal.
2. Response to Notice of Trademark Opposition
The trademark opposition notice to the trademark is passed to the applicant after the trademark opposition notice was filed with the registrar. The trademark applicant must file the counter statement within two months of receiving the opposition notices.
3. Evidence Rounds For and Against Trademark Opposition
After the evidence filing stage, the registrar will inform both parties of the date of hearing, which usually is at least one month after the date of the first notice. The hearing is based on the opposition notice, counter-statement filing, and evidence submitted. The registrar hears the case, and if any of the parties fails to appear for the hearing, the registrar will rule against them.
4. Hearing and Decision Concerning Trademark Opposition
After hearing both parties and considering the evidence submitted by them, the Registrar will decide whether to proceed with the trademark registration or reject the trademark registration application. The decision of the Registrar will be communicated to both parties in writing at the address provided by them.