Rapid Response
We act quickly to meet strict UKIPO deadlines, including filing a notice of threatened opposition to buy time where needed.
Contentious Disputes Lawyers
Trademark Opposition Solicitors
Deadlines are strict. You have as little as two months to act.
Protect your brand with decisive legal action from specialist IP solicitors. We oppose conflicting applications and defend our clients' own applications at the UK Intellectual Property Office, and coordinate EU oppositions.
Why Choose PAIL® Solicitors for Trademark Oppositions?
At PAIL® Solicitors, intellectual property is our highest priority. Trade mark oppositions are complex, time-sensitive and commercially critical. With over 25 years' experience in brand protection, we provide clear, strategic advice and decisive representation.
Proven Track Record
We have acted in trade mark disputes and brand protection matters, including proceedings in the Intellectual Property Enterprise Court.
Commercial Focus
We tailor the strategy to your market position, and negotiate where a settlement serves you better than a hearing.
Trade Mark Opposition Services
Opposing an Application
If a competitor applies to register a mark that is identical or similar to yours, for identical or similar goods or services, you can oppose it on relative grounds where there is a likelihood of confusion. Marks with a reputation, and earlier unregistered rights protected by passing off, can also found an opposition.
Anyone can oppose on absolute grounds, for example that the mark is descriptive or was applied for in bad faith.
Defending Your Application
If your application is opposed, you must file a defence and counter-statement (Form TM8) within two months, or the application will be treated as abandoned. Where the earlier mark has been registered for five years or more, you can require the opponent to prove genuine use.
Cooling-Off & Settlement
Both parties can agree a cooling-off period of nine months, extendable to 18 months, to negotiate. Many oppositions settle through amended specifications, coexistence agreements or consent arrangements.
Evidence & Decisions
If the opposition proceeds, each side files evidence and submissions, followed by a hearing or a decision on the papers. Decisions can be appealed to the Appointed Person or the High Court.
EU & International
EU trade mark applications can be opposed at the EUIPO within three months of publication. We work with EU-qualified representatives on EUIPO proceedings, and coordinate oppositions against international registrations designating the UK.
Beyond Opposition
Our service does not stop at oppositions. We also act on infringement disputes, invalidity and revocation proceedings, licensing and coexistence agreements, and cross-border enforcement.
Protecting Clients' Brands
Cornices Centre Limited v Jason John Wilde and Miles and Wilde Limited (IP-2018-000090)
We represented the claimant in a trade mark infringement claim concerning the use of its mark as a Google Ads keyword.
Client Feedback
"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 complemented by his professional approach - a pleasure to do business with."
F. Ahmed, MD, Adam Ross Retail
How a UK Opposition Runs
Key Stages
- 01 · PublicationTwo months to oppose, extendable to three with a notice of threatened opposition (Form TM7A)
- 02 · NoticeThe opponent files a notice of opposition and statement of grounds (Form TM7)
- 03 · DefenceThe applicant has two months to file a defence (Form TM8), or the parties agree cooling-off
- 04 · EvidenceRounds of evidence and written submissions from each side
- 05 · DecisionA hearing or decision on the papers, with a right of appeal
How Similarity Is Assessed
Following Sabel v Puma [1998], the likelihood of confusion is assessed globally, looking at the visual, aural and conceptual similarity of the marks and the overall impression they give.
In Canon v MGM [1998], the European Court of Justice held that the similarity of goods or services depends on their nature, purpose, method of use and whether they compete with or complement each other. Every opposition turns on its own facts.
Intellectual Property Law Since 1999
25+ Years' Experience
Internet, media and IP law since 1999
Published Author
A Practical Guide to Business, Law & the Internet (Kogan Page, 2002)
International Speaker
MBL Seminars speaker on IP and media law
SRA Regulated
Authorised and regulated by the Solicitors Regulation Authority (No. 827265)
Other IP Disputes
Oppositions often sit alongside infringement and passing off claims.
Registration
A registered mark gives you the strongest base for an opposition.
Trade Mark Opposition Questions
How long do I have to oppose a UK trade mark application?
Two months from the date the application is published in the Trade Marks Journal. You can extend this to three months by filing a notice of threatened opposition (Form TM7A) within the first two months.
On what grounds can I oppose?
The most common grounds are relative: that the mark is identical or similar to your earlier mark for identical or similar goods or services and there is a likelihood of confusion, or that it takes unfair advantage of a mark with a reputation. Earlier unregistered rights and absolute grounds, including bad faith, can also be relied on.
What happens if my application is opposed?
You must file a defence and counter-statement on Form TM8 within two months of being notified, unless both parties agree a cooling-off period. If no defence is filed in time, the application is treated as abandoned.
What is the cooling-off period?
If both sides agree, a cooling-off period gives them nine months from notification to negotiate, which can be extended to a maximum of 18 months.
Can I make the opponent prove they use their mark?
Yes, where the earlier mark has been registered for five years or more. The opponent must then show genuine use for the goods or services relied on, or the opposition may fail on those goods or services.
How do I oppose an EU trade mark?
EU trade mark applications can be opposed at the EUIPO within three months of publication. We work with EU-qualified representatives on EUIPO proceedings.
How much do you charge?
Fees depend on the complexity of the matter and are agreed upfront. We do not offer free initial consultations, legal aid or no-win-no-fee arrangements. Barristers' fees and court or official fees are separate. The UKIPO usually awards only a contribution towards costs, on a published scale.
Can an opposition be settled?
Yes. Many settle through amended specifications, coexistence agreements or consent arrangements, often during the cooling-off period.
Contact PAIL Solicitors Today
Each opposition is assessed on its own merits. Tell us the publication date and we will confirm your deadline, or use the form below.
- The application number and publication date
- Your own registration numbers, if any
- The goods and services that concern you
- Any correspondence with the other side
Telephone: +44 (0)20 7305 7491
Email: peter@pailsolicitors.co.uk
23 Berkeley Square, Mayfair, London W1J 6HE
Scope and fees are agreed in advance before any work begins.
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Contact us today to learn how we can help safeguard your success.