Well, let's start by explaining what a Notice of Threatened Opposition actually is... essentially it's a form (called a TM7A if you're interested) that potential opponents of a trade mark application can 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.
Firstly a Notice of Threatened Opposition, once filed, automatically extends the trade mark opposition period in the UK from 2 months to 3 months, thereby buying the opponent a bit more time to prepare their opposition grounds and/or discuss possible co-existence terms with the applicant. Secondly it acts as a valid warning to the TM 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.
So, what to do, well if you receive a threatened opposition there are normally three options:
- Negotiate co-existence: This is a good option if you want to 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.
- 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. As a health warning, 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 Once your application has been withdrawn, you'll be back to the drawing broad and so, before you file an alternative trade mark application, it would be highly advisable to have your legal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.
Originally published by 19 March, 2021
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.