As you begin reading this article, we would like to take a moment to say congratulations to you as your trademark application has now reached the crucial stage of 3-month opposition period of the trademark (Brazil and Macau are exceptions (See I Can Teach You 7 Steps So You Can DIY Trademark Registration). This marks a significant milestone on your journey towards finalizing your trademark registration. In fact, maturing into trademark opposition stage is by no means guaranteed as your trade mark applications might encounter official objections at earlier stages (see Relative Grounds for Refusal of Registration of Trademark and Absolute Grounds for Refusal of Registration of Trademark). If you are unable to overcome the official objections, your trademark application would, unfortunately, come to an abrupt halt.
Having said that, the trademark opposition period is just yet the moment you can sit back and relax. In this article, we will tell you why trademark opposition stage may not be the final stop of your trade mark journey. Now follow us, we will guide you to get through this 3-month opposition period of your trademark.
What is trademark period of opposition
People often assume that their trademarks will be automatically registered once the trademark office approves but tend to overlook the process of trademark opposition. Trademark opposition is a legal process of a trademark being published for the opposition during which a third party can raise an objection against the registration of a trademark.
How long is the opposition period for a trademark
While the initial opposition period for a trademark is typically three months in most jurisdictions, the opposition period for a trademark in fact varies among different jurisdictions. For example, the UK trademark opposition period is 2 months, which is extendible for 1 more month. By way of contrast, EU trademark opposition period is 3 months, which is non-extendible, but with a “cooling-off period” follow. The trademark opposition period starts upon the publication of the trademark application.
If you have not received any objection from any third party during the 3-month opposition period for the trademark, kudos to you! Your trademark journey has come to a successful and fruitful conclusion where your trademark is now ready to be officially registered. However, this is just a relatively smooth case scenario, while trademark journeys can be unpredictable and fraught with unexpected events. For instance, there may be a similar trademark application that has been approved by the local trademark office, despite bearing similarities to your trademark. Here your chance to raise your objection against such trademark application during the 3-month opposition period for the trademark, and obviously in turn, you may also receive trademark opposition from third parties when your trademark is published for opposition. If you receive an opposition from a third party, there is no reason to panic! Stay tuned to our tips for handling trademark opposition.
Trademark opposition process
Once a trademark opposition against your trademark application is filed by a third party during the 3-month opposition period for the trademark (2 months of UK trademark opposition period and 3 months of EU opposition period), you will then receive a notice of trademark opposition from the opponent which specify the grounds (or even the evidence) for trademark opposition. In this case, take Our Three Tips for Trademark Opposition with you which may help you navigate the challenges that arise during the trademark opposition process. Upon the receipt of the notice of trademark opposition, you are required to file response with the local Trademark Office and may request a hearing at later stages if parties could not come into an amicable settlement.
In most case, going to court to oppose a trademark application is an expensive and undesirable option, unless you are as wealthy as the characters in “Crazy Rich Asians”. It is just like setting money on fire! A more cost-effective approach is to engage a professional IP agent to issue a warning letter to the applicant.
Hence, before receiving a notice of trademark opposition, you will probably first receive a trademark opposition letter during the 3-month opposition period for a trademark. A warning letter actually means that there is larger room to negotiate with the intended opponent to resolve the conflicts in a peaceful manner, because formal procedures have not been initiated. However, the window of negotiation is generally short given the 3-month opposition period for a trade mark, and it is important to act quick to engage an experienced advisor (like Trasomark) to consider the best course of action.
You also need to factor in the size of the intended opponent if a negotiation is possible. Well-known companies are likely to take aggressive action (including filing a trade mark opposition) against similar trademarks, as they value their trademarks highly. For instance, recently Facebook spent 60 million US dollars to acquire the trademark “Meta Financial” from MetaBank and is currently in the midst of a legal dispute regarding the trademark “META” with a company named “META”.
Business negotiation require delicate handling, so it is wise to seek legal counsel if you receive a trademark opposition warning letter. This will help ensure you have every advantage during the negotiation or toward a win-win situation during the trademark opposition process. Likewise if you find any trademark application is confusingly similar to yours, do not miss the varied deadlines (see the above UK trademark opposition period and EU trademark opposition period), as things will be more complicated if the similar trademark becomes an officially registered trademark. Please also study Our Three Tips for Trademark Opposition for initial reference.
Hopefully, you will now understand more about the trademark opposition process, which typically starts when a trademark application is published for opposition. It is essential to pay attention to the basic information and procedures involved during the 3-month opposition period for a trademark, as this is a critical stage in your trademark journey.
