Trademark Opposition

The stages, and the deadlines that end matters

• Notice of opposition filed within four months of publication, in Form TM-O
• Counter-statement filed by the applicant within two months of receiving the notice
• Failure to file the counter-statement means the application is deemed abandoned
• Opponent files evidence by affidavit within two months of the counter-statement
• Applicant files evidence in support within two months
• Opponent may file evidence in reply within one month
• Hearing before the registrar, and a reasoned decision

Grounds an opposition rests on

• Likelihood of confusion with an earlier registered mark or pending application
• Prior use of the mark by the opponent, even without registration
• The mark is descriptive, generic or otherwise lacks distinctiveness
• The application was made in bad faith
• The mark would take unfair advantage of a well-known mark’s reputation
• The mark is deceptive as to the nature or origin of the goods
• Use of the mark is prohibited by another law

Evidence decides it

Opposition is won on documents, not on assertion. Prior use has to be proved with dated invoices, advertisements, packaging and turnover figures showing continuous use from a particular date.

The evidence is filed by affidavit and cannot readily be supplemented later, so what goes in at that stage largely determines the outcome. Poorly evidenced oppositions fail even where the underlying rights are real.

Settlement is common

A significant proportion of oppositions settle. The usual mechanism is a co-existence agreement in which the parties agree to limit their goods, their territory or the form in which each uses the mark.

Settlement is generally cheaper and faster than fighting to a decision, and worth exploring early rather than after both sides have filed evidence.

How we handle it

1. 1 Assessing the position We review the marks, the goods and the evidence available, and give an honest view of the prospects before you commit.
2. 2 Filing the notice or counter-statement The pleading is drafted and filed within the deadline, since both sides forfeit by default.
3. 3 Building evidence Use evidence is assembled and put into affidavit form, which is the stage that usually decides the outcome.
4. 4 Exploring settlement Where a co-existence arrangement is realistic we raise it early, before costs escalate.
5. 5 Hearing An attorney appears before the registrar and argues the matter.
6. 6 Decision The registrar decides, and we advise on appeal where the outcome warrants it.

Frequently asked questions