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Facing a Notice of Threatened Opposition? Safeguard Your Trade Mark Rights.

31st January 2024 by Tiff Elmer

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As a business owner, receiving a Notice of Threatened Opposition from a third party can be unsettling. It is important to take this notice seriously and act promptly to protect your trade mark rights. In this article, we will discuss what you should do if you receive a Notice of Threatened Opposition in the UK.

What is a Notice of Threatened Opposition?

A Notice of Threatened Opposition (called a TM7A if you’re interested) is a legal notification sent by a third party notifying you that they are thinking about filing a formal opposition against the registration of your trade mark.

You might be thinking, well why on earth would they do that? Whilst any third party can attempt to oppose your mark, it typically occurs when you attempt to register a trade mark which it is identical or similar to an earlier trade mark application or registration.

The notice will outline the grounds for opposition and will extend the end of the publication period in the UK from 2 to 3 months, which buys the opponent further time to prepare their formal opposition or discuss terms of a mutual agreement where you can both exist.

So, what should you do?

  1. Do nothing. At Laceys, we do not generally recommend this option, but in theory you could wait and see whether the opponent formally opposes your application. The opponent will have to do so before the end of the extended publication period, otherwise your trade mark will proceed to registration.
  2. Liase with the opponent. This may elicit some form of conciliatory communication from the opponent with a view to settling the matter in a mutually agreeable manner, and we recommend instructing a solicitor to assist you with this. Sometimes explaining how you intend to operate and understanding the differences between the businesses can be enough for the opponent to decide not to formally oppose your trade mark. On other occasions it might be necessary to negotiate formal agreements such as a co-existence agreement whereby parties agree certain trading terms and often limit how they will use their respective brand enabling both parties to co-exist without damaging each other or needing to litigate.
  3. Fight back. If you are confident, you are in a strong position and wish to defend your trade mark then you may decide you want to fight back. At Laceys we can take a look at your matter and provide you with a steer on your chance of success, and we strongly recommend you take legal advise if you pursue this option. This is often a secondary route if number 2 fails or is not possible.
  4. Withdraw your application. This should only really be considered if the opponent’s position is strong. If you do not believe you have a chance of winning, then you may decide you do not want to waste time and costs. Once your application has been withdrawn, you will be back to the drawing board and so, before you file a new trade mark, we recommend you carry out searches first. At Laceys we can assist you with this to identify whether there are any existing applications or registrations which are similar to your application and may prevent you from going back down the same road. Whilst we cannot guarantee your application will be successful even if we do carry out searches, it will give you a far better indication early on.

Receiving a Notice of Threatened Opposition can be a daunting experience, but the real answer to this question is, if you receive one, speak to Laceys. We have a team of specialist trade mark lawyers who will be available to guide you through the process.

If you require any further information or would like to discuss any of the above further, then please contact Tiff Elmer at t.elmer@laceyssolicitors.co.uk or on 01202 377 814.

 

Tiff Elmer

Solicitor — Corporate and Commercial

Direct dial: 01202 377814

Email

Tiff joined Laceys in July 2021 as a paralegal and qualified as a Solicitor in 2023 deciding to specialise in Corporate and Commercial law. Tiff has relocated back home to Bournemouth after living in Bristol for four years where she completed her LPC at the University of Law, and worked in a large commercial law firm as a trade mark paralegal. Before moving to Bristol, Tiff completed her Law LLB Hons degree at Southampton Solent University in 2016 graduating with a 1st.

Tiff has particular experience in intellectual property law and assists her team to advise a range of businesses in various sectors in relation to intellectual property matters and commercial contracts, and is enjoying expanding her knowledge and skills within the commercial field. 

Outside of work Tiff enjoys being outdoors by going for long runs, hikes and paddle boarding around the beautiful South Coast with family and friends.

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