UK and EU trade mark procedures

UK trade mark application opposition procedure

Notes

1. If opposition is based on s.5(1), (2) or (3) of Trade Marks Act and earlier right is more than five years old, a ‘statement of use’ is required when filing TM7.
2. Date on which Registry sends notice of opposition to applicant – ‘notification date’.
3. Cooling-off is a nine month period running from the notification date. Extendable by further nine months at request of both parties if TM9e is filed within first nine months.
4. Either party may terminate coolingoff period at will: applicant by filing form TM8, opponent by filing form TM9t. A the same time, both parties will be provided with a timetable to file evidence and/or written submissions.
5. Date of preliminary indication = ‘indication date’.
6. Date of request for entry into evidence rounds is ‘indication date’ which starts time running to file evidence.

*Discretion of UKIPO, dependent upon grounds of opposition and whether opponent is required to provide proof of use.

UK trade mark revocation (other than non-use) and invalidation actions (Usual timeframes*)

Notes

1. The application must include a Statement of Grounds.
2. If invalidity action based on earlier trade mark which is older than five years, statement of use to be given with TM26(I).
3. Registrar will then specify periods for the parties to file evidence and submissions. General guidelines are given here but periods set are purely at the Registrar’s discretion.
4. A hearing will only be appointed at the request of either party – otherwise “decision from the papers”.
5. An award of costs is made against the losing party.

*At UKIPO’s discretion and assuming no extensions of time or other delays involved.

UK trade mark non-use revocation action (Usual timeframes*)

Notes

1. The application must include a Statement of Grounds.
2. If no evidence is filed with counter statement; evidence must be filed within period specified (minimum two further months – extendable).
3. Onus to show use is on proprietor.
4. The applicant may, but is not required, to file evidence in non-use revocation proceedings.
5. A hearing will only be appointed at the request of either party – otherwise “decision from the papers”.
6. An award of costs is made against the losing party.

*At UKIPO’s discretion and assuming no extensions of time or other delays involved

European Union trade mark (EUTM) application: opposition procedure

*Approximate time scale (from publication)

Notes

1. This is the official publication by The European Union Trade Mark Office (EUIPO).
2. Third parties may file observations on the application, but do not become parties to any formal proceedings.
3. Notice of opposition must be filed within three months of the date of publication of the EUTM or four months of the date of publication of an EU designation of an International Registration. The EUIPO examines the notice for admissibility, which usually takes a week or so; longer if there are any deficiencies to deal with.
4. When accepted, the EUIPO sends a copy of the Notice of Opposition to the applicant to advise them of the commencement of the cooling off period, the date of commencement of the adversarial part of the proceedings, the date by which the opponent must furnish further evidence and the date by which the applicant must file observations in reply.
5. The initial cooling off period expires two months from the date of the above notification by the EUIPO. The adversarial part of the proceedings starts on the day after expiry of the cooling off period. At the request of both parties, the cooling off period can be extended for a further period of 22 months. Either party can opt out of the cooling off period at any time, but not during the last month. If a party wishes to opt out, they may do so unilaterally simply by information the EUIPO in writing of their intention. The EUIPO will then inform both parties that the cooling off period will expire two weeks after the said notification. If a party does decide to opt out, this decision is irrevocable.
6. The period for filing the opponent’s evidence and further arguments is extendable.
7. The period for filing the applicant’s observations is extendable.
8. If the EUIPO considers that it needs further information or evidence, it invites further submissions from the opponent and from the applicant. If the EUIPO considers the information sufficient, it will make a decision without inviting further submissions.
9. The EUIPO decides whether to appoint hearings, but is generally not in favour thereof.
10. An award of costs is made against the losing party