IP Cases & Articles

Trade Mark (CTM) Opposition Proceedings

In most jurisdictions, once an application for registration has been examined and accepted by the relevant Intellectual Property Office, it will be published for the purposes of opposition. Some countries operate a post registration opposition period but in most jurisdictions publication for opposition will take place before the mark is finally accepted for registration

An application can be partially opposed (in respect of some of the goods and services claimed) or in it’s entirety.

In the UK, any person may file an opposition. In other jurisdictions (such as before the Community Trade Mark Office) only the proprietor of an earlier right may oppose a Community trade mark application.

This papers deals separately with opposition procedure before the UK Intellectual Property Office and before OHIM (the Community Trade Mark Office).

Under UK procedure, oppositions are normally based on Section 3 or Section 5 of the UK Trade Marks Act 1994. These sections deal with absolute and relative grounds for refusal of registration.

That is, an opposition based under Section 3 attacks the inherent registerability of the trade mark applied for, e.g. that it is non-distinctive or descriptive in some way.

Oppositions which proceed under Section 5 are based on earlier rights and can only be lodged by the owner of the relevant earlier right. For the purposes of a UK opposition, these earlier rights include any registered trade mark rights affective in the United Kingdom, i.e. UK trade marks, Community trade marks and International trade marks designating either of these two jurisdictions (UK or CTM). Both registered trade marks and pending applications with an earlier filing date than the date of the mark being opposed may form the basis of an opposition.

Additionally, an opponent can rely on unregistered rights acquired through use in the United Kingdom (passing off rights) or on well known trade mark rights under the provisions of Article 6 of the Paris Convention.

Where an opposition is based on earlier rights, the allegation is that generally due to the similarity of the corresponding trade marks and goods and services, there exists a likelihood of confusion on the part of the public between the respective trade marks. Owners of trade marks enjoying the reputation in the United Kingdom may oppose new applications covering both identical and similar goods and dissimilar to those protected by the earlier right alleging that the later mark takes unfair advantage of or cause detriment to the distinctive character or repute of the earlier trade mark.

Note that to rely on a registered trade mark in opposition proceedings which is more than five years old, you must be in a position to prove use of that mark. For more details of proof of use requirements see D Young & Co article "Evidence and Proof of Use in Trade Mark Proceedings Before the UKIPO and OHIM" (see linked resources, right).

Where an opposition is based on common law rights in passing off, the opponent must prove that they would be entitled to succeed in an action for passing off by demonstrating the necessary requirements for that tort, ie, that they enjoy good will and reputation in the unregistered trade mark, that use of the new mark applied for would case a relevant misrepresentation to the public causing damage to the earlier right holder.

An action based on a well known trade mark under Article 6 of the Paris Convention can only be brought by a national of a convention country other than the UK. The trade mark would need to be well known in the United Kingdom although neither UK business nor UK goodwill is required. The proprietor of that well known trade mark is entitled to object to use of an identical or similar trade mark in relation to identical goods or services where that use is likely to cause confusion.

Note that under Section 5, the proprietor of an identical earlier trade mark covering identical goods or services to the opposed mark, need not prove any confusion or unfair advantage/detriment. An opposition based on an identical trade mark covering identical goods or services should be automatically successful under the UK legislation.

Other earlier rights effective in the United Kingdom may also form the basis of a successful opposition such as copyright, design right or registered designs.

Also note for the purposes of determining whether the earlier right is indeed an earlier right predating the fling of the mark to be opposed, it is important to take into account any priorities claimed for the rights.

Community Trade Mark Opposition Proceedings

Oppositions before the Community Trade Mark Office can only be filed on the basis of earlier rights. Objections based on inherent grounds have to be made by a process of observations only. The grounds for opposition are contained in Article 8 of the Community Trade Mark Regulation. For the purposes of a Community trade mark opposition, earlier rights consist of earlier Community trade mark applications or registrations, earlier trade marks registered or applied for in any member state of the European Union and International trade marks designating either the Community trade mark or an EU member state.

Oppositions may also be based on non-registered trade marks or other signs which have been used in the course of trade in the Community or a particular EU member state where such rights are of more than mere local significance. The relevant law of the applicable member state must specifically recognise the existence of the right in that jurisdiction in order to rely on this as a basis for a Community trade mark opposition.

Opposition may also be filed where an agent has inappropriately applied for a Community trade mark of the true proprietor. For example, if a trade mark proprietor in another jurisdiction had appointed an EU licensee or distributor, it would be inappropriate for that licensee or distributor to apply for the Community trade mark themselves. The original trade mark proprietor would be entitled to oppose the Community trade mark application.

Where the opposition proceeds on the basis of an earlier right, (whether registered or pending), the opposition generally proceeds either on the basis of a likelihood of confusion (where marks and goods are similar) or on the basis that the mark applied for would take unfair advantage of and cause detriment to the distinctive character or repute of an earlier trade mark. Where both corresponding trade marks and goods are identical, there is no need for the opponent to show any likelihood of confusion or indeed unfair advantage or detriment. Note also that marks with a reputation can oppose marks applied for both in respect of identical and similar goods and services and dissimilar goods and services.

When choosing marks to rely on for the purposes of an opposition at Community trade mark level, it is important to note the following points:

Trade marks which have been registered for more than five years at the date of publication of the Community trade mark to be opposed are subject to OHIM’s proof of use requirements. Earlier rights will only be taken into account for the context of the opposition proceeding to the extent to which use can actually be shown.

A successful opposition based on an earlier Community trade mark right defeats the whole of the Community trade mark application without leaving open any possibility of conversion of that Community trade mark application. A successful opposition based on earlier national rights, would leave the Community trade mark applicant free to convert to their Community trade mark into national applications in any countries not covered by the opposition, e.g. if an opposition is based on earlier rights in Spain, France, Italy and Germany, even if the opposition is successful, the opponent may convert into separate national applications in any of the other member states of the EU (excluding these four countries).

A further feature of the Community trade mark system is that OHIM may not necessary decide the opposition on all of the rights relied upon. Accordingly, taking the above example, OHIM may analyse the opposition only in connection with the Spanish registration and, if finding it to be successful, refuse the application without examining the other earlier rights. This leaves the applicant free to convert in all countries in the EU, except Spain (even though the opponent enjoyed earlier rights in France, Italy and Germany). To avoid this unfortunate consequence, it is always better to rely on earlier Community trade mark filing if available.

In the above situation, the only route open to the proprietor would be to separately challenge the converted national applications in France, Germany and Italy.

For more details on this subject, please contact your usual D Young & Co advisor.