Publication of a UK trade mark application, following examination and acceptance by the UK IPO, begins a 2-month period during which other parties, particularly those that own earlier rights, can file an opposition against the application by filing an official Form TM7 ‘Notice of opposition’ in order to challenge its registration.
This 2-month opposition period can be extended for an additional, third month by a potential opponent, upon correctly filing an official Form TM7A ‘Notice of threatened opposition’ at the UK IPO before the expiry of the initial 2-month opposition period. The opposition period is then extended, but only for the entity that filed the Form TM7A. It is, however, possible for multiple Forms TM7A to be filed by different entities (including related entities) against a single application.
If a Notice of threatened opposition is not submitted and/or an opposition is not filed (including by the entity that filed any Form TM7A) in due time, the subject application should proceed to registration shortly after the expiry of the opposition period.
It is generally accepted that the entity that files the Form TM7A must match with the entity that ultimately files any opposition thereafter, although we now go on to discuss how this understanding is not strictly true.
The Relevant Law
Section 38 of the UK Trade Marks Act 1994 (the “Act”) states as follows:
|
38. Publication, opposition proceedings and observations
(1) When an application for registration has been accepted, the registrar shall cause the application to be published in the prescribed manner.
(2) Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration.
The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.
(2A) Where a notice of opposition is filed on the basis of one or more earlier trade marks or other earlier rights —
(a) the rights (if plural) must all belong to the same proprietor;
|
Meanwhile, Rule 17 of the Trade Mark Rules 2008 (the “Rules”) state as follows:
|
17. Opposition proceedings: filing of notice of opposition; section 38(2) (Form TM7)
(1) Any notice to the registrar of opposition to the registration, including the statement of the grounds of opposition, shall be filed on Form TM7.
(2) Unless paragraph (3) applies, the time prescribed for the purposes of section 38(2) shall be the period of two months beginning with the date on which the application was published.
(3) This paragraph applies where a request for an extension of time for the filing of Form TM7 has been made on Form TM7A, before the expiry of the period referred to in paragraph (2) and where this paragraph applies, the time prescribed for the purposes of section 38(2) in relation to any person having filed a Form TM7A (or, in the case of a company, any subsidiary or holding company of that company or any other subsidiary of that holding company) shall be the period of three months beginning with the date on which the application was published.
|
Interpretation of the Law
As can be seen from Rule 17 of the Rules, the 1-month extension of time to oppose an application is only granted to “any person having filed a Form TM7A (or, in the case of a company, any subsidiary or holding company of that company or any other subsidiary of that holding company)”, where the reference to a “person” should be understood to include a “legal person”, namely “an individual, company, or other entity which has legal rights and is subject to obligations”. Where an opposition is ultimately filed by any other, unrelated entity, it will be deemed to have been filed out of time, since the initial 2-month opposition period would have already presumably elapsed.
The ability of a subsidiary or holding company of the entity that filed the Form TM7A to oppose is not widely known or appreciated. It has been challenged several times by applicants, but with the UK IPO consistently upholding that appropriate subsidiary or holding companies can still be valid opponents. Some recent examples of UK IPO decisions on the point are set out below:
- Tasty Baking Company vs. [redacted] (Opposition No. 420607, 5 November 2020): this case involved a Notice of threatened opposition being filed by “Flowers Bakeries Brands, LLC”, but the actual opposition itself being filed by “Tasty Baking Company”. The opponent confirmed that it “is a wholly owned subsidiary” of “Flowers Bakeries Brands, LLC” and so the opposition was allowed not proceed.
- Venners Limited vs. Venner OY (Opposition No. 423974, 3 August 2021): in this case, “VenPowa Limited” filed a Form TM7A, but the ultimate opponent was “Venners Limited”. The opponent successfully argued and proved, through evidence, that both entities were in fact subsidiaries of the same parent company, being “Christies PLC”.
Furthermore, [redacted] vs. Kismat Konnections Ltd (Opposition No. 420332, 23 April 2021), saw an opposition ultimately be admitted by the UK IPO where a clerical error had resulted in the name of the applicant being given as the potential opponent in the Form TM7A, thereby giving rise to a discrepancy when the opponent was correctly named in the Form TM7 that was eventually filed. Whilst the facts of this case relate to an “obvious error”, it arguably gives encouragement to parties that inadvertently give the wrong name of the opponent or potential opponent.
Comments and Guidance
Despite the ‘safe harbour’ offered under Rule 17(3), relating to subsidiary and holding companies, there are still some remaining questions. For example, what about related companies that are closely associated with the entity that filed, but that are not strictly subsidiary or holdings within the meaning of Rule 17(3), such as companies that are under the same directorial control from a practical day-to-day basis, where those directors are not also the owners of both of the companies? Similarly, what about individual owners of the company that filed the Form TM7A if it transpires that the relevant earlier trade mark rights are owned by the individual rather than the company itself?
In both of these hypothetical cases, we would hope that the UK IPO might be persuaded to still allow the oppositional to proceed, particularly since refusing the opposition could be said to be against the Overriding Objective and could give rise to later invalidity proceedings, although this cannot be guaranteed.
There may be other, valid reasons as to why there may be a discrepancy between the entity that filed the Form TM7A and the entity that ultimately files an opposition. One scenario where this could apply is if the owner of the potential opposing earlier trade mark rights is changed in between the period of filing the Form TM7A and the Form TM7. In such a situation, one would hope that the UK IPO would look favourably on this discrepancy in the circumstances. It would, nevertheless, still seem to be more prudent to hold off assigning the relevant earlier trade mark rights until after the opposition has been filed (or even concluded), in order to put this scenario beyond any doubt.
In situations when there is any doubt, we suggest that would-be opponent(s) consider submitting a Form TM7A in the name of any/all possible opponent entities. Filing a TM7A Notice of threatened opposition is quite cheap, simple and essentially risk-free. It does not, for example, expose the potential opponent to the possibility of any kind of adverse costs award.
It should, however, be remembered that the owner of the subject trade mark application is sent a copy of the Form TM7A Notice of threatened opposition by the UK IPO, and so the identity of the potential opponent will then be known to the applicant – the potential opponent has put its head above the parapet. This can be important where, for instance, the potential opponent has not conducted sufficient due diligence ahead of time and has not therefore appreciated that the applicant may own even earlier registered or unregistered trade mark marks that trump the potential opponent’s own prior rights, whether this is in the UK or beyond.
As can hopefully be seen from the above discussion, there is a wide range of possible scenarios where a discrepancy between the entity named in the Form TM7A and the Form TM7 – whether deliberately or unintentionally – could arise. There are many more possibilities besides those mentioned here. Each is likely to have a very specific set of factual circumstances, and so potential opponents are encouraged to seek professional advice as soon as a possible issue emerges.
