Trade mark opposition process: key differences between the UK and EU
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In many respects, trade mark practice in the UK is closely related to that of the EU, but the practice in terms of the opposition process is very different, and failure to appreciate this can lead to users of the system being unprepared for key milestones and, in a worst-case scenario, being the losing party in a dispute which could have been won.
Following Brexit, the UK is no longer covered by EU trade mark rights. It is necessary to apply to the UKIPO (UK Intellectual Property Office) in order to obtain registered trade mark protection in the UK. (See our previous insight ‘Key differences between UK and EU trade marks’ for more information.) The UK has a large trade mark register – the UKIPO received 158,821 trade mark applications in 2022 and the underlying trend shows the number of filings increasing solidly year-on-year. The UKIPO does not conduct a substantive examination in relation to earlier registered and applied-for trade marks, but despite this, possession of a UK trade mark registration can be a defence to an action for trade mark infringement.
Therefore, preventing registration of identical and similar trade marks is particularly important in the UK meaning it is often necessary to oppose UK trade mark applications to prevent registration of identical and similar trade marks. Although it is possible to invalidate trade mark registrations later, the statutory provisions on acquiescence mean trade mark owners can soon find themselves unable to object to use or registration of a registered trade mark. For both reasons it is imperative for brand owners to have trade mark watches in place to actively police their brands and to take steps to prevent registration of third-party trade marks where there is a potential clash with their activities or future plans.
The table below provides a general overview of typical proceedings in the UK and EU, but key points to bear in mind are:
- The UKIPO manages trade mark disputes far more actively than the EUIPO and pushes them through to a conclusion more quickly. Deadlines set in connection with the filing of evidence are hard to extend whereas extensions are much more readily granted by the EUIPO. This is potentially a huge trap for the unwary, who many find themselves in the unfortunate position of having to fight extremely hard to have relevant evidence considered by the UKIPO.
- The UKIPO has strict upper limits on the number of pages of evidence that can be filed, this being a mere 300 pages for first rounds of evidence and 150 pages for evidence in reply. Part of the skill in filing evidence before the UKIPO is in selecting the most relevant and compelling documents to use in evidence.
- Nearly all correspondence to the UKIPO in UK proceedings must be copied to the other party. There is no requirement to send a copy of any document to another party in EUIPO proceedings. Trade mark dispute practice before the UKIPO greatly resembles practice before the courts of England and Wales. This means that evidence submitted in UK trade mark disputes has to be given by way of an affirmed statement and case management conferences and hearings are common. The UKIPO can also make an order for discovery or production of documents in the trade mark disputes they handle (although this type of event is quite rare). While statements in writing are a feature of EUIPO practice, case management conferences and orders for discovery of documents are not a feature and hearings are incredibly rare. There is no automatic right to a hearing at the EUIPO, in contrast to the position in the UK, and cross-examination of witnesses is possible at UKIPO Hearings. Cross-examination is rarely appropriate but can be crucial in cases involving the question of bad faith.
- The UKIPO will consolidate related cases to enable the parties to file a single set of evidence across all the related files and to file one set of submissions/ attend one hearing. Suspension of proceedings to await the outcome of related disputes is uncommon, whereas this is a very common feature of EUIPO practice.
- Appeals from UKIPO decisions are unusual and rarely succeed because of a need to demonstrate the UKIPO opposition division decision-maker was clearly wrong. Appeals from EUIPO opposition division decisions are more common and the barrier to succeeding is not as high.
- There are two ways to appeal UKIPO opposition division decisions – by way of appeal to the ‘Appointed Person’ or to the High Court. Appeals before the High Court will usually be more costly and slow, and the case may not be heard by a judge with trade mark expertise. Therefore, appeals to the ‘Appointed Person’ (a senior trade mark expert appointed by the Lord Chancellor) are far more common, even though there is no further right of appeal. The EUIPO only has one appeal route.
Key procedural steps in UKIPO and EUIPO trade mark oppositions – a comparison
| Procedural step | UKIPO oppositions | EUIPO oppositions |
|---|---|---|
| Opposition period | 2 months (extendible to 3 by filing an on-line request). | 3 months (non-extendible). |
| Submission of opposition | No online opposition filing is possible yet; but forms can be downloaded from the IPO website and submitted by email. The opposition form is not user-friendly. | Most oppositions are submitted online, and the process is much quicker and easier than in the UK. |
| Possible bases of opposition |
|
|
| Cooling off period | After the initial notice of opposition is filed, the applicant and opponent can agree to negotiate and extend the cooling off period to allow for this. The total cooling off period allowed is 18 months. | After the initial notice of opposition is filed, the applicant and opponent can agree to negotiate and extend the cooling off period to allow for this. The total cooling off period allowed is 24 months. |
| Initial defence | After the opposition is communicated to the applicant, they are provided 2 months (assuming no cooling off period is entered into) to submit an initial defence and request submission of proof of use in relation to any registered rights over 5 years old. | The EUIPO does not provide for the filing of an initial defence prior to the opponent’s opportunity to file evidence. |
| Preliminary view | In some UK trade mark disputes, the UKIPO provides a preliminary view (known as a ‘preliminary indication’) on whether the opposition will succeed, after the initial defence is filed. The rationale for provision of a preliminary view was to save costs for the parties in terms of filing evidence and to encourage quick settlement. | A preliminary view is not a feature of EUIPO practice. |
| Supporting evidence and submissions (opponent) |
The opponent is generally allowed 2 months to file evidence in chief and a further period of 2 months to file evidence in reply to any evidence filed by the applicant. The evidence in chief will need to include proof of use if the applicant has requested this. The deadlines are difficult to extend and require provision of detailed and compelling reasons. Further evidence can be filed with leave of the UKIPO – e.g. if a new matter comes to light during the course of proceedings. Submissions/ arguments may be filed with the evidence but are usually filed after all the evidence is submitted. All evidence and submissions filed must be copied to the other side. There are strict limits on the number of pages of evidence which can be submitted. |
The opponent is allowed 2 months to file submissions, evidence and arguments after the cooling off period expires but before the applicant has filed any reply to the opposition. The opponent will be granted a further two months to file proof of use, if requested and will also be granted two months to file a reply to any materials filed by the applicant. The EUIPO can request the submission of further arguments and evidence if they feel this will be helpful. The deadlines can be extended by 2 months as of right and by a further 2 months if there are compelling reasons. Further time to respond could be obtained by making use of the continuation of proceedings provision, which will provide a further 2 months to meet a deadline. There is no limit to the number of pages of evidence that can be filed. |
| Supporting evidence and submissions (applicant) |
The applicant has one opportunity to file evidence to support their case, 2 months after the evidence in chief (and any proof of use) has been filed by the opponent. The deadline is difficult to extend and requires provision of detailed and compelling reasons. Further evidence can be filed with leave of the UKIPO – e.g. if a new matter comes to light during the course of proceedings. Submissions/ arguments may be filed with the evidence but are usually filed after all the evidence is submitted. All evidence and submissions filed must be copied to the other side. There are strict limits on the number of pages of evidence which can be submitted. |
The applicant is allowed 2 months to file submissions, evidence and arguments after receiving the opponent’s first set of submissions, but they can delay filing these papers if they wish to request proof of use. If proof of use is requested, the applicant can reply to this and to the submissions, evidence and arguments filed by the opponent at the same time. The EUIPO can request the submission of further arguments and evidence if they feel this will be helpful. The deadlines can be extended by 2 months as of right and by a further 2 months if there are compelling reasons. Further time to respond could be obtained by making use of the continuation of proceedings provision, which will provide a further 2 months to meet a deadline. There is no limit to the number of pages of evidence that can be filed. |
| Hearing | A hearing can be requested as of right by either party. Submissions can be filed in lieu of attending the hearing. | Hearings are not available as of right and rarely take place. Submissions are filed as part of the opposition process and not as a separate step at the end. |
| Decision | Decisions will usually issue 12 weeks after the submissions are filed or hearing has taken place. | At present, opposition decisions seem to issue around 3-4 months after the last set of submissions is filed. |
| Appeal period for first appeal level | 28 days (can be extended if there are compelling reasons). | 2 months – unextendible (there is a further period of 2 months to file grounds of appeal). |
| Further levels of appeal | If an appeal is filed to the High Court, there are 2 further levels of appeal. It is incredibly rare for an appeal to proceed further than the High Court. | There are 2 further levels of appeal, which are relatively commonly used. |
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