Any entity seeking to register a new mark usually has business plans to use the mark in question. Once the mark reaches registration, they are more likely to start or continue to use the registered right.
Therefore, opposing new trademark applications can be a vital means of avoiding conflict in the marketplace with established trademarks. Likewise, defending trademarks against such objections can be a valuable means of securing the ability to use a chosen trademark.
The UK’s exit from the EU has made this process more complicated. Trademark owners and their advisers must now treat the EU and the UK separately when protecting and enforcing marks, so that more applications for duplicate and identical marks from the EU and the UK are filed than before. As a result, there is also an increased need for trademark owners to oppose and defend their EU and UK trademark applications.
This landscape creates difficulties in understanding and coordinating the different requirements of EU and UK opposition procedures. Brand owners need to adopt a strategy that manages risk and budget to achieve positive business results. We’ve provided information and advice on how to deal with these issues below.
Comparison of EU and UK practices
Although the legal framework and criteria applied by UKIPO and EUIPO to adjudicate trademark oppositions are effectively the same, there are important differences in interpretation and procedure. Further details are provided in our Guide to Trademark Opposition at UKIPO and Guide to Trademark Opposition at EUIPO.
Overall, delays are shorter at UKIPO than at EUIPO. UKIPO’s process for evidence and argument is also more complicated and involved than EUIPO’s.
Procedure and deadlines
UKIPO’s objection window is two months, while EUIPO’s period is three months. However, UKIPO allows parties to extend the opposition period by one month.
As a general rule, EUIPO procedural deadlines are longer and allow more time (e.g. cooling-off period) for the parties to agree on a settlement. There is also no obligation for the plaintiff to present a defense to the opposition to prevent a decision being rendered against him by default.
UKIPO’s opposition deadlines are shorter, the Tribunal has more onerous requirements when it comes to granting extensions and suspensions, and there is less time scheduled for parties to conduct settlement negotiations only for EUIPO procedures.
It is important to note that the applicant is required to file a defense to the opposition to maintain the application, which is deemed withdrawn if a defense is not filed.
Evidence and arguments
UKIPO requires submission of written arguments when filing an opposition in order to clarify the case. This is not the case at EUIPO.
UKIPO has strict rules for the format of evidence. EUIPO allows more flexibility but places more value on certain forms of evidence than UKIPO.
At the end of the procedure, the UKIPO allows the parties to request a hearing before a decision is taken, whereas generally only written arguments are accepted at the EUIPO.
Post-Brexit relationship between forums
There is currently no direct effect between decisions made in a forum (except in rare cases; for example, when EU rights extended to the UK over Brexit were already being challenged at the EUIPO).
The UK has incorporated pre-existing EU law into its legislation, which means that previous EUIPO and EU Court decisions still have persuasive value at UKIPO. On the other hand, the decisions of the UKIPO will not have any persuasive value at the EUIPO.
There have historically been differences in interpretation and decision-making. Over time, the UK may change trademark law and make new binding court decisions, which will increase the discrepancies in practice between the UK and the EU.