May 2004 saw a shake-up of the procedure for oppositions filed at the UK Trade Marks Registry. This change was brought about by the Trade Marks (Amendment) Rules 2004 after a formal consultation period during which both attorneys and trade mark owners were able to submit their opinions on the proposed amendments. The different stages of the new opposition procedure are as follows:
Stage 1 – Publication of Application
Application is published in the Trade Marks Journal (three month opposition period).
Stage 2 – Opposition filed
Opponent files (amended) Form TM7. New TM7 includes
a) Statement of grounds of opposition (separate sheet for each
b) Statement that earlier mark (registration) being relied upon
has been put to genuine use in relation to the goods/services on which the
opposition is based (if the earlier mark has been registered for five years or
more prior to the date of publication of the opposed mark); or
c) Proper reasons for non-use (if the earlier mark has not been put to genuine use).
When basing an opposition on Section 5(4) and the right to prevent use of the later mark through the law of passing off, information on the use made of the earlier mark is also required.
Registrar copies Form TM7 to the applicant.
Stage 3 – Counterstatement filed
Applicant files (amended) Form TM8 within three months of notification of opposition. New TM8 includes:
a) Counterstatement; and
b) Section for the applicant to admit or deny the opponent’s statement of use. If the applicant denies the opponent’s statement of use, he must state in his TM8 that he wishes to put the opponent to proof of use of the earlier right(s), indicating the earlier mark(s) and the goods or services for which he requests proof of use to be shown.
Extensions of time
Either party may file Form TM9c within three months of the date of notification of the opposition requesting an extension of time for filing Form TM8. Whoever requests the extension must have the express agreement of the other party.
The cooling off period now consists of a single period of twelve months and cannot be extended. The cooling off period may be terminated at any point by
a) the applicant filing his Form TM8 (no requirement to copy to
b) the opponent filing a Form TM9t (must copy to the applicant)
Once the Form TM9t has been filed, the applicant must submit his Form TM8
either one month after the date on which Form TM9t was filed or three months
after the notification date (whichever is later).
Stage 4 – Preliminary Indication
Where the whole opposition or part of it is based on Sections 5 (1) and/or (2), the Registrar now issues a preliminary indication by which she notifies the parties of her opinion as to whether or not the contested mark should be registered in respect of the goods/services listed in the application. The date of notification of the preliminary indication is called the “indication date”.
If the Registrar indicates that the mark should be registered for all of the goods/services claimed in the application, the opponent has one month from the indication date to file notice of intention to proceed with the opposition on (new) Form TM53. If no TM53 is filed, the opponent is considered to have withdrawn his opposition.
If the Registrar indicates that the mark should not be registered for any of the goods/services, the applicant has one month from the indication date to file notice of intention to proceed with the application on (new) Form TM53. If the applicant fails to file Form TM53, he is considered to have withdrawn his application.
If the Registrar states that the mark should be registered for some, but not all of the goods/services listed in the application:
the opponent must file Form TM53 if he wishes to pursue opposition to the goods/services deemed acceptable
the applicant must file Form TM53 if he wishes to retain any of the goods/services deemed unacceptable
the applicant must formally limit his specification to the acceptable goods or services within the term for filing Form TM53 if he wishes to proceed only with those. If this is not done and neither party files a TM53, the application will be refused in its entirety.
In any of the above cases where either party files Form TM53, it will be the Registrar’s job to copy it to the other side and the date upon which this notice is sent is known as the “initiation date”.
Stage 5 – Evidence
The opponent has a period of three months from the initiation date to file evidence in support of his opposition and, where requested by the applicant, proof of use in support of its statement of use.
The applicant then has three months from the date of filing of the opponent’s evidence to file its own evidence in support of its application.
Unless the Registrar gives leave to either party to file further rounds of evidence, the final round of evidence rests with the opponent, who may file evidence strictly in reply to the applicant’s evidence within three months of the filing of the applicant’s evidence.
All evidence is deemed to have been filed only when it
a) has been copied to the other side; and
b) is accompanied by (new) Form TM54, in which the party filing the evidence is required to list the evidence filed.
Both parties have the right to be heard.
Stage 6 – Appeals
Where either party to the opposition proceedings wishes to appeal against a decision, an appeal to the Appointed Person must now be filed on (new) Form TM55, which must include a Statement of Grounds in support of the appeal.
The new UK opposition procedure is in its infancy and its effectiveness is therefore yet to be seen. However, one positive change is that the proof of use requirement will make opponents think twice before relying on numerous earlier marks in an attempt to swamp trade mark applicants. This amendment may even out the balance of power in oppositions and enable the parties and the Registry to focus on relevant earlier marks, thus determining oppositions faster and more efficiently.
Of course, one drawback of the new proof of use provision is that trade mark owners will have to closely monitor their UK and CTM trade mark portfolios and seriously consider the vulnerability of those marks which have not been used for a period of five years or more since their date of registration.
Whereas under the old opposition procedure, it was possible to rely on vulnerable, unused registrations despite the threat of counter attack by the applicant through revocation, under the new procedure such marks will be more or less redundant in oppositions, since they cannot be supported with proof of use. Trade mark proprietors would therefore be wise to commence or recommence use of marks protected by vulnerable registrations or to consider re-filing those marks if they remain of continuing interest in the UK.