Trademark Opposition Experts: A Lawyers Guide

Can I Overcome Trademark Oppositions?

Overcoming trademark opposition is part of the trademark registration process. You can seek the help of a trademark disputes lawyer.

Trademark registrations are not always a straightforward process. There are several businesses competing for recognition within the same industries.

You may wish to apply to register a trademark similar to an earlier trademark for underlying goods and services that may or may not be similar to those underlying an earlier trademark.

The general rule is that a trademark application can be rejected if there is a risk of confusion or association with an earlier trademark. The decisive factor in considering the likelihood of confusion is the question of whether there is a risk that the buyer or consumer wrongly attributes the two brands with the same business origin.

When will overcoming trademark opposition be necessary?

(i) When the application is to register an identical or similar trade mark to an earlier trade mark for similar or identical products and /or services; and

(ii) When the application is to register an identical or similar trade mark to an earlier trade mark for dissimilar products and /or services.

When applying to register identical or similar marks and an earlier trademark for similar products or services, there is a risk of confusion. However, the risk is less clear for dissimilar products.

Some trademarks that appear similar to an earlier trademark have not been deemed confusingly similar, even with comparable goods. Consumer perception is essential in evaluating similarity, regardless of the products' different purposes. Ultimately, trademark law aims to protect consumers from confusion while safeguarding trademark owners' rights.

Seeking the help of trademark opposition lawyers can offer valuable insights and strategies for trademark registrations.

Importance of Prompt Action in Trademark Oppositions

Taking prompt action in a trademark opposition or infringement case is crucial to safeguarding your rights and ensuring a successful outcome.

One leading UK case that demonstrates the consequences of not taking prompt action in a trademark dispute is Parker-Knoll Ltd v. H. & B. (Holdings) Ltd [1961] RPC 265. In this case, the plaintiff's delay in opposing the registration of a similar trademark led to a loss of rights in their own mark, highlighting the importance of timely action in trademark matters. Under Section 38 of the UK Trade Marks Act 1994, there is a limitation period for bringing trademark infringement actions, which is generally six years from the date of the infringement. The Trade Marks Rules 2008 set specific time limits regarding trademark opposition proceedings. For example, Rule 20 outlines that an opposition notice must be filed within two months of the publication of the trademark application. This period can be extended by one month if a request is made before the deadline. Failure to adhere to these timelines can result in the inability to oppose the trademark effectively, reinforcing the need for prompt legal action.

Case Examples in Trademark Opposition

Examples of the sorts of cases for which you would need a trademark opposition solicitor are:

Case A British Telecommunications plc v. One in a Million Ltd [1999] 1 All ER 98 - this case emphasised the importance of consumer perception in assessing the similarity of goods sold in the same industry, regardless of their different purposes. The ruling established that the marks could cause consumers to misidentify the source of services, thereby reinforcing the view that trademark protection extends beyond identical items to encompass those that could create confusion in the minds of consumers.

Case B L'Oréal SA v. Bellure NV [2009] ECJ - this case emphasised that products marketed for similar consumer needs could be considered similar, highlighting the significance of consumer understanding in trademark disputes. In this case, L'Oréal, the well-known cosmetics brand, challenged Bellure, a company selling imitation perfumes, for trademark infringement and unfair competition. *Note that some EU law does apply to UK law following Brexit as assimilated law.

Case C Kraft Foods Group Brands LLC v. Milka GmbH [2016] EWHC 1163 (Ch) - this case examined the criteria for determining similarity based on the nature of goods and their intended use, reinforcing the need for a comprehensive analysis in trademark opposition cases. In this case, Kraft Foods sought to oppose Milka's application to register the trademark "MILKA" for chocolate products. The key issue was whether the goods in question—chocolate products from both companies—were similar in nature and intended use, which would significantly impact the likelihood of confusion among consumers. The High Court examined various factors to determine similarity, including 1. Nature of Goods 2. Intended Use, and 3.Target Market. It emphasised that a nuanced analysis is essential in trademark opposition cases, as disparate elements must be weighed to reach a conclusion about potential consumer confusion.

Case D “Free Your Style" 16/10/2013 of T282/12 - this case involved assessing the similarity of the products or services, the relevant market context, potential consumer perceptions, and the likelihood of confusion among consumers regarding the brands involved. Regarding the comparison of goods and services, it is necessary to take into account all relevant factors which characterise the relationship between them. These factors include, their nature, their intended use and whether they are competing or complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned. Here, the court held that the services covered by the mark applied for are one of the possible distribution channels of the goods covered by the earlier mark. Therefore, the services and products in question were considered similar.

Case E “Gourmet” OHIM Opposition No. B 2 804 786 - this case involved assessing the similarity between the trademarks, analysing the products or services for their nature, purpose, and distribution channels, and evaluating the likelihood of consumer confusion.

The likelihood of confusion presupposes that the trademark applied for and the earlier trademark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier trademark was registered. However, as proven by the precedents mentioned above, a global appreciation of the likelihood of confusion implies that other circumstances must be examined. For instance, the likelihood of confusion will also depend on the degree of distinctive character of the earlier trademark and the interdependence between the similarities of the trademarks and the similarity of the goods and services involved.

Why Choose PAIL Solicitors?

Choose PAIL Solicitors as your trademark opposition lawyers and trademark dispute solicitors for our expertise in intellectual property, tailored legal strategies, and commitment to safeguarding your brand's reputation for the following reasons.

Our Expertise in Trademark Law

- Expertise in trademark disputes: We specialise in trademark law ensuring comprehensive legal solutions tailored to your needs.

Tailored Strategies for Your Trademark Challenges

- Tailored Legal Strategies: We provide strategic support in trademark opposition and infringement cases, focusing on your specific circumstances and objectives.

Testimonials and Success Stories

We have successfully defended clients trademarks multiple times including - Cornices Centre Limited v Jason John Wilde and Miles andWilde Limited IP-2018-000090 in which we represented the claimant in a Google Ads keywords trademark infringement case.

I would highly recommend PAIL Solicitors. Peter’s knowledge and expertise in the area of online businesses and brands was hugely valuable and this was complimented by his professional approach - a pleasure to do business with.

- F. AHMED, MD ADAM ROSS RETAIL

I would highly recommend PAIL Solicitors. Peter’s knowledge and expertise in the area of online businesses and brands was hugely valuable and this was complimented by his professional approach - a pleasure to do business with.

— MD, CORNICES CENTRE

Contact PAIL Solicitors Using The Below Now!

Each trademark case is unique and assessed on its own merits. The criteria for determining similarity often depend on the nature and intended use of the products. This highlights the importance of engaging expert trademark opposition lawyers who can provide the thorough analysis needed for effective legal representation in complex cases.