What is a Trademark?

A trademark distinguishes the goods or services of one trader from another. It may consist of words, designs, letters, numerals, colors, sounds or even shapes, and capable of distinguishing the goods or services of your business from those of another.

A trademark must be registered within specific “classes” which identify/limit the goods and/or services of that class (for example class 16: “Publications, books, periodicals, newspapers”). A list of these classes can be found at the UK Intellectual Property Office’s (“UKIPO”) website. This means that it is possible to register identical or similar trademarks if they are in different, unconnected classes. For example, Swan matches are unlikely to consider that its trademark has been infringed if an application for Swan tyres was made.

Infringement or Opposition?

There is an important distinction to bear in mind between a trademark infringement and opposition.

Trademark Infringement

Is the unauthorised use or reproduction of a trademark from which the infringing party benefits by the others’ reputation and/or goodwill. Trademark infringement will also occur when damage has been sustained to the business which is being “passed off”. Remedies are available within statute and common law.

A trademark infringement claim can be avoided by thoroughly researching the trademark you wish to use and registering it early.

Trademark Opposition

A trademark opposition occurs when an owner of an earlier trademark opposes a new trademark application. An opposition to a trademark application  will normally be made to avoid brand dilution, police your rights and/or to put the market “on notice”. The opposition will be on the basis that the new trademark is identical or similar, and it intends to provide goods and/or services which are similar or identical to that of the earlier trademark so exists a likelihood of confusion on the part of the public (Trade Mark Act 1994, Section 5).

Trademark applicants should therefore be careful when deciding and drafting their specifications for a trademark application. Applicants should ensure that the specifications are limited to goods or services which are of immediate or mid-term interest to the business. Otherwise, the application may meet with unnecessary oppositions which could delay and increase the costs of the registration process. If you are concerned that your trademark may be at risk, utilising a “watching service” may prove extremely valuable.

 The Opposition Procedure

Deadline to file and opposition

When the applicant’s trademark is first applied for, it will enter the Trade Marks Journal, whereupon the opposing party will have two months to file its Notice of Threatened Opposition (TM7). The opposition must be based on an earlier right (i.e. an earlier trade mark).

What happens once the Notice of Opposition has been filed?

The applicant will be sent a copy of the TM7 and have two months to file its defence and counter statement (TM8) which will seek to challenge the opposition on a number of grounds (subject to the claims made within the Notice of Opposition).

The “cooling-off” period

The parties may apply for the “cooling-off” period by submitting a TM9C. If granted this normally gives the parties nine months to negotiate and settle the matter without entering the adversarial stage and incurring extra costs.

Will the UKIPO give a preliminary opinion?

Once in receipt of the applicants defence and counter statement, the Hearing Office may issue and opinion on whether the opposition will succeed or not. Whilst the opinion is not legally binding, it can facilitate settlement between the parties at an early stage.

Where the parties’ cases are too finely balanced, the Registrar may decline to give a preliminary opinion and dates are then set for the filing of evidence (i.e. the “evidence rounds”).

What happens if the parties proceed to the evidence rounds?

When evidence rounds are required, the parties must provide as much evidence as possible that supports their position in the form of a witness statement.

How is a decision reached?

Having exchanged evidence, if both parties elects a “decision from the papers” the decision will be made by the UKIPO. Alternatively, the parties may agree on a hearing, where oral submissions will also be considered. Whichever route is elected, careful consideration as to the merits of each case and cost recoverability.

Can a decision be appealed?

The decision can be appealed to the High Court or “Appointed Person” (i.e. an independent IP specialist).

What is the costs position?

The loosing party will pay the winners costs. However, the costs do not relate to the actual professional costs incurred but are awarded on a scale, normally in the sum of £1,500 to £2,000, and awarded at the discretion of the UKIPO.

Griffin Law is a dispute resolution firm comprising innovative, proactive, tenacious and commercially-minded lawyers. We pride ourselves on our close client relationships, which are uniquely enhanced by our transparent fee guarantee and a commitment to share the risks of litigation.  If you have any specific questions regarding a dispute, please email  justice@griffin.law or call 01732 52 59 23.


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