Trade Mark Opposition

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Trade Mark Opposition & Revocation

While the specifics may vary from country to country, most Trade mark offices will publish a journal (online or in paper form) outlining pending Trade mark application to give third parties an opportunity, over a set time period, in which to oppose the trade mark application, before the application matures to registration, and before all the rights that arise from registration are engaged.

In the UK, there is a two month period in which third parties may oppose registration of a trade mark application. This period may be extended to three months.
The most common reasons for someone wanting to oppose the registration of a trade mark are:

  • (a) they think the trade mark is one which is not unique (for example that it is generic, misleading or descriptive, etc. These are known also as absolute grounds) to the applicant and should be free for other traders to use; or
  • (b) they own an earlier trade mark - which does not have to be registered itself - which is the same as, or similar to, the pending trade mark (known as relative grounds); and
  • (c) they believe that the mark was registered in bad faith

Generally, the opposer must have standing (a legitimate interest that would be threatened by registration of the mark) to oppose.

Opposition proceedings can result in one of three outcomes:

  1. the opposition could fail and the UK Intellectual Property Office (UKIPO) will register the trade mark;
  2. the opposition succeeds and the UKIPO will refuse to register the trade mark; or
  3. the opposition partly succeeds, and the applicant is obliged to limit their list of goods or services to those which have not been objected to.

Revocation for reasons of non-use

If a registered trade mark has not been used in respect of goods or services for which it is registered, either by the owner or by someone with the owner’s agreement, then it may be possible to revoke that trade mark, if :

  1. in the five years since the trade mark was registered there was no genuine use
  2. for any uninterrupted period of five years after registration there was no genuine use; and
  3. There are no good reasons why the trade mark has not been used

Revocation for reasons other than non-use

The registration of a trade mark can also be revoked(or partly revoked)for reasons than non-use if either the trade mark has become ‘generic’ (meaning it has become the common name in the industry for goods or services for which it is registered), or the trade mark can also be revoked when its use is likely to mislead the public, as to the nature, quality or geographical origin of the goods or services on which it has been used

Contact us here for more information on trade mark oppositions / revocation.

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  Under: Trade marks; Trade mark opposition; IP; Manchester, UK.

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Article: McDonald’s “Big Mac” European Trade Mark revocation case.