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opposition to a UK trademark people often bring this up when they receive a note of threatened opposition to their trademark application so I thought it might be useful to give an overview of the UK intellectual property offices or position procedure the UK IPO provides a number of guidance documents about UK opposition's which provide detailed information and advice about all aspects of the Opposition process rather than duplicating those notes I want to give you a short overview with web links to the relevant UK IPO information what is an opposition about all UK trademark applications are published by the UK IPO for a period of two months extendable for one month publication allows third parties to oppose registration if they consider the UK trademark shouldn't proceed to registration there are many grounds on which you can oppose registration a common reason is that the published mark is confusingly similar to an earlier mark owned by you for the same or similar goods or services however you can also oppose a UK mark if you consider that it should not have been accepted by the UK IPO for example if the published mark is descriptive of the goods or services or if it was filed by the applicant in bad faith for more information on the UK IPOs website our opposition's go to this link outline of the Opposition procedure the main steps in a UK opposition are as follows usually you will contact the applicant asking them to withdraw or limit their application under threat of filing an opposition failure to do this may lead you to later losing costs even if you win the opposition you can oppose a UK mark by filing a notice of threatened opposition form t7 this form sets out your opposition claims the applicant then has two months to reply by filing a defense and counter statement this is usually a denial of your plane if a defense encounter statement is filed each side is given two months to file its evidence first you have two months to file evidence in support of your opposition for example evidence of the reputation or use of your earlier mark then the applicant will have two months to file evidence in defense of its trademark application when the evidence has been filed the UK IPO asks if either side wants to have an oral hearing this is held before a hearing officer which you or your lawyers will have the opportunity to argue your case in person if neither side requests a hearing the UK IPO decides the matter based on the written evidence and legal submissions which have been filed within a few months the UK IPO will issue its decision either upholding or rejecting the opposition in full or in part awarding costs to the winning side either side can appeal the decision what happens before filing opposition now if you or your lawyer become aware of a UK trademark application which you believe should not be registered its usual to contact the applicant requesting that they voluntarily withdraw their application in whole or in part this is important because if you don't do this you and you succeed in the opposition the UK IPO may penalize you on costs ie you may forfeit some of award of costs you can extend the two-month opposition period by an additional month if you apply to the UK IPO before the end of the initial two-month period this is done by filing a form TM 7a for which there are no official fees for more information on filing the form go to this link filing a notice of opposition now notice of opposition is filed by means of form TM 7 the standard official fee is 200 it's possible to go for a fast-track opposition and they reduce fear 100 if you can rely on a limited number of grounds here's a link for more information about fast-track opposition's you can claim a number of different grounds of opposition in the standard notice of opposition TM 7 these are divided into two broad categories firstly if you believe the UK IPO should not have accepted the UK mark for registration this might be because use of the mark is descriptive generic a standard term in the trade or if you believe it was filed in bad faith these are called absolute grounds of opposition secondly if you believe the registration would be in conflict with your earlier trademark rights or other rights such as a design or copyright these are relative grounds of opposition most opposition's are filed because the opponent is the holder of an earlier trademark a UK one or EU or international mark protected in the UK and so they don't want the later trademark to conflict with their earlier one the standard grounds relative grounds on which opposition is normally filed our likelihood of confusion you claim that the UK mark is the same or similar to your earlier mark for the same or similar goods or services such that there is a risk of confusion among the relevant consumers reputation grounds you claim here that your mark enjoys a reputation in the UK the EU or wherever and the use of the mark would be taken fair advantage to the direct detriment of your reputation and distinctiveness unregistered marks now if your mark enjoys goodwill and reputation in the UK then regardless of whether it's registered or not you might oppose the later UK mark if you can prove use of the UK mark would be likely to cause consumer confusion in legal terms that it would amount to passing off for detailed guidance notes on how to complete the notice of opposition go to this link what happens after the notice of opposition has been filed well the UK IPO will transmit the notice of opposition to the applicant who is then given two months to respond by filing a defense encounter statement form tm8 if no defense is filed the UK IPO who reject the UK mark and costs may be awarded to the opponent if the applicant does file a defense encounter statement formed here mate within the permitted period the UK IPO will forward it to you for more information on the defence encounter statement click here or rather go here you should have decided to enter into discussions after opposition has been filed because it's possible to do further next steps in the proceedings to allow time for negotiations by requesting a nine-month cooling-off period this is requested by both sides before the deadline to file the defence and counter statement by filing tm9 see it's now a maximum of 18 months of extension to the cooling-off period can be asked for for more information about the entire cooling-off period go to this link the evidence rounds in a trademark opposition now your evidence after the applicant has filed its defense encounter statement the UK IPO will allow you two months to provide evidence in support of your opposition this factual evidence and not legal argument a common reason for it might be if your earlier mark is registered for more than five years for example you'll normally be required to file proof of evidence of the use of your mark in the UK or EU if that's where your mark is registered for more information on proof of use go to this link if you claim a reputation for your mark then you'll need to file evidence of your reputation in the UK or in the EU if your mark is an EU mark if your earlier
Thanks for your comment Johnetta Daskam, have a nice day.
- Carmelina Knie, Staff Member
what will happen to the EU trade marks after brexit am andre Mincha fan if you're wondering how the United Kingdom will treat trademarks registered or applied for in the European Union and what you should do about it then you're watching the right video because you're about to find out just that whether you're happy that the UK has finally gained its freedom from the tyranny of the European Union yay or if you think it's the biggest mistake ever boom or you just don't care about European politics the fact remains the same the brexit just happened the United Kingdom left the European Union and 11:00 p.m. GMT on January 31st 2020 the UK Parliament and the European Parliament have finally ratified the withdrawal agreement between the UK and the EU which means that it's not a no deal brexit so the UK will now enter into a transition period until December 31st 2020 the UK government has declared that it will not agree to any extension of this transition period and during this transition period the UK will remain part of the EU single market and customs union also unless otherwise will be provided in the withdrawal agreement EU law will continue to apply to the UK and most references to EU member states in applicable EU legislation will apply to the UK however the UK will no longer be entitled to participate in the elections decision-making and governance of EU institutions bodies offices and agencies all right so what does this all mean for EU trademarks and Trademark applications first of all if you own a European Union trademark that gets registered by December 31st 2020 so and of this year December 31st 2020 you will automatically acquire a corresponding reg and fully enforceable UK trademark at no extra charge now here's what this means now I'm shooting this video in early February of 2020 European trademarks only take a few months to register without an office option now what this means is that if you want to register your trademark into you and get a free extension of your trademark registration to the UK now is the time to do it you can still make it before December 31st of 2020 now don't tell me I didn't warn you if you wait too long because I did I just did now if your au trademark application registers on or after January 1st of 2021 you're out of luck applications that are still pending after December 31st of 2020 will not be converted into corresponding UK applications automatically now the only thing you're gonna get is a grace period until the end of September of 2021 now if you file your UK trademark application during this grace period you can claim the filing priority date back to the filing date of your EU trademark applications for example you file your au trademark on the day that trademark factory will be celebrating its ninth birthday on August 31st of 2020 right so let's say you file your au trademark on August 31st 2020 and it doesn't register in the EU by December 31st 2020 it means you have no protection of your brand in the UK unless you file your trademark application in the UK directly so let's say sometime in April of 21 you realize that whoops your brand is not only not protected in the as your competitor has applied to register your brand is their trademark in February of 2021 okay and so what this grace period does it gives you the right to file your trademark application in the UK let's say April of 2021 and claim priority of your trademark application in the UK back to the date of your EU trademark application that means that for all intents and purposes your UK application will be deemed to have been filed on August 31st 2020 in other words your UK application will be deemed to have been filed before your competitor filed their trademark in February of 2021 but really once again it would be much easier and much cheaper for you to just father EU trademark application ASAP and get it registered before December 31st 2020 this way you will get your UK trade mark registration automatically at no extra charge now if you do get the UK trademark - right from your new trademark registered before December 31st 2020 then such corresponding UK trademark will have the same renewal dates and filing priority dates as the registered EU trademark from which it derives now from that point on you would need to renew the UK trademark according to UK rules separately from the EU trade law right so your corresponding UK trademark will not be at risk of cancellation before December 31st 2020 even if you don't have any genuine use of the brand in the UK however if you continue not to use the mark in the UK your new UK trademark can then be cancelled for non use as always just starting from 2021 now so here are the action steps for you if you're a business owner if your Branagh if you already have a registered trademark in the EU relax you will be getting your UK trademark automatically all you would need to do is make sure you renew your UK trade mark at the same time as your EU trademark simply renewing your EU trademark would not renew your corresponding UK trademark okay you have a pending trademark application indeed you know keep an eye on it to make sure it registers by December 31st 2020 if it does then once again relax this new trademark will also trigger a corresponding UK trade mark registration at no extra charge now if you have a pending trademark application in vu and it doesn't register by December 31st 2020 then in order to protect your brand in the UK you would need to file a separate trademark application in the UK directly you can claim priority of your UK trade mark application back to the filing date of your EU trademark application as long as you file your UK trade mark application before the end of September of 2021 so before September 30th 2021 now if you do not have a pending trademark application in the EU but would like to protect your brand in 27 European countries and in the United Kingdom then what are you waiting for now is the time in fact we are quickly approaching the time after which it will be too late for you to jump on the bandwagon so if Europe is potentially on your radar as one of your target markets make sure you file your you trademarks ASAP and yes trademark factory can help you with that we will offer you the same deal as for other countries that is a comprehensive trademark search to determine if your brand is trademark herbal a single flat fee that will take care of the entire process from start to finish and a one out of percent money-back guarantee in case your trademark application doesn't get registered don't wait book your free call with one of our strategy advisors right now just go to trade my factory comm and fill out the form to book your call right now until then I will see you in the next video
Thanks masculinisme7 your participation is very much appreciated
- Carmelina Knie
About the author
I've studied entomology at Columbia International University in Columbia and I am an expert in spacecraft design. I usually feel curious. My previous job was special education administrator I held this position for 31 years, I love talking about photography and axe throwing. Huge fan of Jerry Seinfeld I practice water polo and collect barbie dolls.
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