Guidance

Guidance: standard opposition proceedings before the Trade Marks Tribunal

Updated 9 February 2024

1. What is opposition?

When a trade mark application has successfully completed the examination process it is accepted and published in the on-line Trade Marks Journal. It is then open to any third party (an opponent) to oppose its registration on either absolute and/or relative grounds. It is possible to oppose the entire application or the registration of the mark for only some of the goods and services.

What are absolute grounds?

The absolute grounds, under Section 3 of the Trade Marks Act 1994, cover defects in the trade mark itself.

The most common reasons for opposing a trade mark application is that the trade mark is descriptive of the goods and/or services for which it is to be registered, or that it is generic for those goods/services, or otherwise non-distinctive and should therefore be free for everyone in that line of trade to use.

What are relative grounds?

Relative grounds, under Section 5 of the Trade Marks Act 1994, means that there exists an earlier trade mark or earlier right (which does not have to be registered) owned by the opponent with which the applicant’s trade mark would conflict if it were used.

Who can oppose a trade mark application?

Anyone can oppose the application on absolute grounds but only the proprietor of an earlier trade mark or earlier right may oppose on relative grounds.

When can opposition be filed?

There is an initial two month opposition period beginning immediately after the date of the publication of the trade mark in the Trade Marks Journal.

Can the opposition period be extended?

The opposition period may be extended to three months for any party who files an electronic form TM7a ‘Notice of threatened opposition’ within the initial two months, beginning immediately after the publication date. This form can only be submitted on-line and it can be found on our website. Filing a TM7a does not commit you to opposing the application but you should not file one unless you are seriously considering doing so.

How much does it cost to file a TM7a?

There is no fee payable with this form.

What should I do if I receive a TM7a?

You may want to consider contacting the party who has filed the TM7a to see whether an amicable resolution can be agreed. For example, an amendment to the list of goods/services may resolve the potential conflict thus avoiding the need for any opposition to your application.

Will the Tribunal be able to advise me on how to prosecute my case?

No, the Tribunal must remain impartial at all times although we can help you with procedural matters. Therefore, you may wish to consider obtaining professional legal advice from a registered trade mark, or patent attorney, or a solicitor before you make any decision on how to proceed.

Can you recommend a trade mark or patent attorney, or a solicitor?

We cannot provide any recommendation but you can contact the Chartered Institute of Trade Mark Attorneys, the Chartered Institute of Patent Attorneys, or the Law Society.

How can I limit the list of goods/services to overcome the opposition?

You can inform the Trade Mark Examiner of any changes to your application by submitting a TM21B ’Changes to an application’. The Examiner will consider the amendment and tell you if it is clear enough to be accepted. If acceptable your application will proceed to registration.

What happens if the proposed amendment is rejected by the Examiner?

The Examiner will tell you why the proposed change is not acceptable, which may help you to propose an alternative acceptable restriction.

How much does it cost to file a TM21B?

There is no fee payable with this form.

What if I don’t want to proceed with my application?

You may withdraw your application. You must put your withdrawal request in writing.

Will I have to pay any costs if I withdraw my application?

If you withdraw your application before an opposition is filed, you will not be liable for costs. However, if you withdraw your application after an opposition is filed and the opponent has, prior to filing the opposition, given you a reasonable chance to withdraw your application then you may be liable for some limited costs.

2. What is the cost of an opposition?

What should I do before I file an opposition?

If you are considering opposing a trade mark application, you should approach the applicant to see if you can reach a resolution to the conflict without the need to resort to legal proceedings. If you file an opposition without first having contacted the applicant and the applicant withdraws the application without defending it, you will not be awarded any costs and you will not recover the cost of filing the opposition.

How can I oppose a trade mark application and what does it cost?

If you want to oppose the registration of a trade mark then you must file a TM7 ‘Notice of opposition and statement of ground’.

If your opposition is only based on Sections 5(1) and/or 5(2) grounds the fee will be £100.

If your opposition is only based on grounds other than Sections 5(1) and/or 5(2) the fee will be £200.

If your opposition is based on Sections 5(1) and/or 5(2) and one or more other grounds, the fee will be £200.

Can I add additional grounds to my notice of opposition?

Yes, if once you have submitted your TM7 you wish to add grounds other than 5(1) and/or 5(2) you will need to file a TM7G ‘Request to add grounds to a notice of opposition’ accompanied by a £100 fee.

If you wish to add grounds under 5(1) and/or 5(2) these can be requested by letter or email.

Can anyone help me fill out the TM7?

Guidance notes on how to fill in the form are available.

To whom should I send the TM7 to?

The form can be emailed to us to [email protected] or send the TM7 by post to:

Intellectual Property Office -

Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ

3rd Floor
10 Victoria Street
London
SW1H 0NB

All other non fee bearing forms for the Tribunals can be sent to [email protected].

Do I have to send a copy of the TM7 to the applicant?

No, the Tribunal will send a copy of the TM7 to the applicant and the Tribunal will copy to the opponent any defence filed in response. However, the Tribunal will not, as a matter of course, copy any other document. To ensure fairness and transparency of proceedings, it is imperative that any correspondence, including forms, sent to the Tribunal is copied to the other side and contain confirmation that it has been copied.

If parties persistently fail to copy correspondence and documents to the other side, this will be regarded as unreasonable behavior and there may be cost implications at the conclusion of the proceedings.

What happens once the TM7 has been received?

The Tribunal will check the TM7 to make sure that it has been submitted within the time period allowed and that the correct fee has been paid; and that sufficient information has been provided for the opposition to proceed. If further clarification is required the Tribunal will write to the opponent and allow a short period of time to clarify the grounds of opposition.

What happens if I haven’t sent the correct fee with the TM7?

In order for the TM7 to be validly filed it must be accompanied with the correct fee.

When will the applicant know that I have submitted a TM7?

Once the formalities check has been concluded, the Tribunal will serve the TM7 on the trade mark applicant.

What does the applicant have to do?

The applicant will have two months from the date the TM7 is served to file a TM8 ‘Notice of defence and counterstatement’.

If the applicant agrees with anything that the opponent has said in the statement of reasons, he should say so. If the applicant does not accept something that the opponent has said, he should say why he does not accept the opponent’s grounds; whether the opponent is put to proof of the facts he relies upon and he can also give any additional grounds he has to support the trade mark application.

How much does it cost to file a TM8?

There is no fee payable with this form.

Can the time period for submitting a TM8 be extended?

The period for filing the TM8 can only be extended if the parties agree to enter a cooling off period. See process for filing a TM9C below.

What happens if I do not file a TM8?

If no notice of defence is submitted within the period allowed, the application may be deemed as abandoned. If only some of the goods and/or services have been opposed, the application will be deemed abandoned in respect of those specified items and the trade mark will be registered for the remainder of the goods/services.

Will I have to pay any costs if I do not file a TM8?

If you do not file a TM8 and the opponent did not give you reasonable chance to withdraw the application before filing the opposition, you will not be liable for costs. However, if you did get a reasonable opportunity to withdraw and you put the opponent to the cost of filing an opposition, then you may be liable for some limited costs.

What happens if the parties wish to negotiate a settlement?

If the parties wish to seek a negotiated settlement and avoid the cost of preparing and submitting evidence or submissions, they can file a TM9C ‘Request for a cooling off period’ (no fee required) which will extend the period for the filing of the applicant’s defence.

When can ‘cooling off’ be requested?

The TM9C must be filed within the two month period allowed for the applicant to submit the notice of defence of the trade mark application. This gives the parties nine months from the date that the opposition is served on the applicant in which to try and reach a settlement.

Who can ask for ‘cooling off’?

Either the applicant or the opponent can ask for a ‘cooling off’ period, but both parties must agree to it.

Can the cooling off period be extended?

The parties can request an extension to the initial nine months cooling-off period by submitting a TM9E ‘Request for an extension to the cooling off period’ (no fee required). This will extend the cooling -off period by a further nine months (to a maximum period of eighteen months). The request must include a statement confirming that the parties are seeking to negotiate a settlement to the opposition proceedings.

What happens if the parties cannot reach an agreement?

If negotiations break down at any time, either side can end the ‘cooling off’ period. The applicant does this by submitting a TM8, whilst the opponent submits a TM9T ‘Request to terminate a cooling off period’ (no fee required). The applicant is then allowed one month within which to file the notice of defence on a TM8.

What happens after the TM8 has been received?

Once the formalities check has been completed and the Tribunal has accepted the TM8, it will be served on the opponent. At the same time the parties will be provided with a timetable to file evidence and/or written submissions.

3. Evidence in opposition proceedings

What evidence do I need to file?

Unless the opponent has been required to show use of an earlier mark relied upon as the basis for the opposition on relative grounds, you do not have to file evidence. However, certain matters, such as the existence of an earlier unregistered right cannot be proved without evidence. As this is a matter for the parties to decide, the Tribunal will not provide advice on the content of evidence. However, the Tribunal does have the power to require parties to file evidence covering particular issues.

How should I present my evidence?

Evidence is normally given in the form of a witness statement, though the Tribunal may order that it should be provided by way of an affidavit or statutory declaration.

What is a witness statement?

A witness statement is a legal document setting out the facts of the case as you believe them to be. The information provided must be based on the witness’ own personal knowledge; it should stick to the facts that relate to the grounds for opposition and should not be used to present legal arguments or the opinions of the parties. Legal arguments may be made in a letter.

The witness statement must clearly identify the proceedings; the witness must give his full name and address; it must be signed, dated and include a statement of truth.

Do I attach any exhibits to the witness statement?

Any exhibits filed with the witness statement must be clearly identified and referenced with the initials of the witness and numbered sequentially. For example, a witness statement submitted by John Smith with three exhibits would be referred to as JS1, JS2 and JS3.

Each exhibit must have a header sheet which clearly identifies the case reference number and also the exhibit. For example, ‘This is exhibit JS1 referred to in the witness statement made by John Smith dated this…day of…2012.

Do I have to number all of the exhibits?

All individual exhibits of more than 4 pages must be numbered and any evidence submitted with unnumbered pages will be returned. The page number should be applied to the bottom right hand corner of each page.

Does a witness statement have to be sworn under oath?

No, but it must be signed by the person making it and it must include a statement of truth.

What is a statement of truth?

A statement of truth is a statement signed by the witness to verify that the contents of the witness statement are true. It is worded ‘I believe that the contents of this statement are true’. Failure to provide a statement of truth will result in the witness statement being returned.

What happens if a party does not wish to submit any evidence of facts?

If a party does not wish to file evidence of facts but merely wishes to comment on the other side’s evidence or challenge its validity, then this can be presented as a written submission in the form of a letter.

You must send a copy of your evidence, or written submissions, to the other side in the proceedings.

Can the time period for submitting evidence be extended?

The period allowed is considered as sufficient in most cases, however the Tribunal may in exceptional circumstances extend the time periods for filing evidence.

Do I have to send actual samples of the product?

No. If samples of the mark are to be submitted as exhibits to a witness statement, then the Tribunal will accept photographs of the product bearing the trade mark. The witness statement should date the use shown in the photographs, i.e. “Exhibit A is a photograph showing how the mark was used in relation to XXXX in the period MM/YYYY to MM/YYYY”.

Can I send my evidence attached to an email?

Yes, but any evidence must be filed in a standard accessible format e.g. Windows® Media compatible.

What is proof of use evidence?

When an opposition is based upon an earlier trade mark which has been registered for five years or more before the date of application (or priority date, if applicable) of the opposed mark in the Trade Marks Journal, the opponent is required to state, on the TM7, , whether, and for which goods or services, the earlier registered trade mark has been used during the five year period preceding that date. The applicant may accept the opponent’s statement, or he or she may put the opponent to proof of use of the earlier mark.

What must my proof of use evidence show?

The evidence must show that the earlier mark has been put to genuine use in relation to the goods/services for which it is registered, during the 5 years leading up to the filing date of the opposed mark (or its priority date, if applicable).

The evidence should demonstrate e.g.

• for which goods or services the trade mark has been used
• the financial turnover from sales of these goods or services under the trade mark during the five year period
• if possible, examples of sales records showing the mark in use for the goods/services for which use is claimed e.g. copies of sales invoices or similar sales records
• how the goods/services have been advertised under the trade mark, if possible with examples of such advertising from the relevant period
• the period of time during which the trade mark has been used and the geographical area in which it has been used
• how the trade mark is used in relation to the goods/services e.g. on labels, signs, invoices, advertising materials etc

How can I apply for an extension of time?

A request for additional time to submit evidence beyond that which you have been allowed should be made before the expiry of the relevant time period by submitting a TM9 ‘Request for an extension of time’ accompanied by a £100 fee.

What do I need to do?

Any request must be fully supported with reasons as to why the additional time is needed. The request must explain what has already been done to date; what is left to do; what has prevented you from filing the evidence in time; and how much additional time is required. In the event that the request has been made after the set time period has expired, full and detailed reasons for the delay in making the request must also be provided.

What happens after the TM9 has been received?

On receipt of a properly filed TM9, the Tribunal will make a preliminary decision on whether to allow or refuse it. The Tribunal may on occasions decide that the amount of time requested is too long but may allow a shorter period of time. The parties will be informed in writing and a period of fourteen days will be allowed for either party to challenge the decision and request a procedural hearing. Unless a party objects to the preliminary view, and provides written reasons for doing so, the Tribunal’s decision will be implemented.

What is a stay of proceedings?

If once the evidential stages have begun the parties wish to seek a negotiated settlement, they can make a joint request in writing to stay, or suspend, the proceedings.

What must the parties do when requesting a stay?

The parties will have to provide the Tribunal with full reasons to support the request and where settlement negotiations have already started, details of any action, together with dates, must be provided. The parties are not expected to provide the Tribunal with confidential or without prejudice material, but the Tribunal must be satisfied that serious progress is being made towards a settlement. The parties will be expected to explain whether the time requested is merely to resolve minor issues or whether there exists serious barriers to an amicable resolution. In addition, the parties must provide a realistic assessment of when they expect a conclusion to the negotiations.

What is ‘without prejudice’ material?

The term without prejudice is used when one side to a dispute makes a statement to the other side intended to settle the dispute. If documents containing such statements are filed, the Tribunal will return them and state that they cannot be taken into account.

When will I know the outcome of the opposition?

Once the periods for filing evidence or submissions are complete, the parties will be invited to file final submissions or request a hearing. The Tribunal will indicate whether it believes that a hearing is necessary. It remains open to either party to request a hearing.

Following either a full review of the papers on file, or a hearing, the Hearing Officer will issue a decision in writing. The decision will explain the background to the case and why the Hearing Officer has reached his decision. It will also refer to the relevant trade mark law and legal authorities. It may also include an order that one side should pay a contribution to the costs to the other.

What is a hearing?

A party has a right to be heard before any adverse decision is taken against them. The person who decides the case is called a ‘Hearing Officer’. There are three types of hearings which may occur during the course of proceedings. These are Procedural Hearings, Case Management Conferences and Substantive Hearings.

What is a Procedural Hearing?

Where procedural disagreements arise and a party will not accept the Tribunal’s preliminary view on the matter, a Procedural Hearing may be requested to resolve the issue. Examples of matters which are resolved at such a hearing are the admissibility of the opposition or the defence and the striking out of particular grounds of opposition.

What is a Case Management Conference?

A Case Management Conference (CMC), is a hearing appointed by the Tribunal to decide what needs to be done on a case and by whom. If procedural disagreements arise after a defence has been filed, the matter will usually be resolved by holding a CMC. Examples of matters resolved at such a hearing would be extension of time requests, whether cases should be consolidated (joined together), confidentiality orders, suspension of proceedings, and the cross-examination of witnesses.

At the CMC, the Hearing Officers will use their wide case management powers to make appropriate directions to the parties covering all aspects of the future management of the case. Such directions may include the setting of a timetable and structured framework to ensure that the proceedings are concluded within a timely manner whilst keeping costs to a minimum.

What is a Main Hearing?

The Main Hearing will deal with the substantive issue of the dispute.

Do I have to attend the hearing in person?

No, though you may want someone to attend on your behalf e.g. a Trade Mark Attorney. If no one attends you may instead rely on written submissions which are submitted before the hearing and copied to the other side. Hearings are generally held via a video conference link between our London and Newport offices, or on the telephone. In certain circumstances, when for example cross-examination of a witness has been requested, we can arrange for a hearing to be held in person in either London or Newport. Hearings are taken by Hearing Officers who have delegated powers to act on behalf of the Registrar.

What happens at a hearing?

Each party attending will have the opportunity to put their case to the Hearing Officer. The Hearing Officer will ask any questions he or she has.

What does it cost?

There is no charge for a hearing.

However, the successful party may make a claim for an award of costs to be given in its favour. Any costs awarded in proceedings before the Tribunal will not cover all the costs of the proceedings and are only intended to provide a contribution towards the costs of the successful party.

4. How to appeal the Hearing Officer’s decision

Can I challenge the Hearing Officer’s decision?

If either party feels that in reaching his decision, the Hearing Officer has made an error on a point of law, or that he or she has made an unreasonable decision on the facts, then an appeal within 28 days from the issue of the decision can be filed.

To whom do I appeal?

The appeal can be either to the Appointed Person or to the High Court.

What is an Appointed Person?

An Appointed Person is a senior intellectual property lawyer appointed by the Ministry of Justice; he or she is wholly independent of the Tribunal.

The Appointed Person offers a low cost alternative to appealing to the High Court

How do I appeal to the Appointed Person?

An appeal to the Appointed Person is made by filing a TM55P ‘Notice of appeal to the Appointed Person’. The notice of appeal must include the grounds of the appeal together with any relevant trade mark law and legal authorities relied upon in support of each of the grounds of appeal.

What does it cost?

The fee is £250.

In addition, the successful party may also make a claim for an award of costs to be given in its favour. Any costs awarded in proceedings before the Appeal Tribunal will not usually cover all the costs of the appeal and are only intended to provide a contribution towards the costs of the successful party.

How do I appeal to the High Court?

The procedure for making an appeal directly to the High Court is set out in the Civil Procedure Rules Part 52 for Appeals and Part 63 which relates to Intellectual Property claims.

If you appeal to the High Court you should send us a copy of your appeal and keep us informed of the outcome as the Tribunal does not play any part in those proceedings.

What does it cost?

You will need to ask the court for information on court fees and any award of costs should your appeal be unsuccessful.

Can I challenge the outcome of the appeal?

The Appointed Person is an appellate tribunal whose decision is final. Decisions by the High Court may be appealed, if the party is given leave, to the Court of Appeal.

5. Costs in opposition proceedings

Will I be able to recover all of my costs before the Tribunal or the Appointed Person?

At the conclusion of any proceedings before the Tribunal the successful party may request that an award of costs be made in its favour. There is no upper limit to the award which may be made but it is established practice that the Tribunal awards costs from an official scale. The scale reflects a variable amount for the preparation, filing and examination of forms and for the amount and relevance of any evidence filed. A party without legal representation will be fully reimbursed the cost of any official fees, but will only receive 50% of the amount from the official scale. This ensures that the unrepresented party is not overcompensated for the cost of the proceedings.

What is the scale?

The current scale may be viewed at TPN1/2023. Previous scales can be viewed on the National Archives website.

Will you enforce the costs award if the other side doesn’t pay?

No. The enforcement of any award is a matter for the successful party. An order for costs may be enforced in the same way as any order of the High Court. Failure to pay an award may result in the details of the failure to comply with the costs award being published on the IPO website.