Opposing a Trade Mark application – Food for thought
In order to protect goodwill, be that a brand name, an important logo, or perhaps even an infamous sound (MGM’s Lion Roar) you can apply to the UK Intellectual Property Office (“UKIPO”) to register a Trade Mark in this jurisdiction. It is very important that this process is carried out correctly.
If the application to register a Trade Mark is accepted, the application then gets published in the Trade Mark Journal and parties are then on notice of the proposed application, and have a period of time to oppose it. This is effectively an opportunity for any party to attempt to prevent the Trade Mark application from succeeding and being registered. Once an application to register a Trade Mark is published, any party has a maximum period of 3 months from publication of the application, to oppose it. An application to register a Trade Mark can be opposed on a number of grounds. For example, if a party considers that the application would be too similar to their own, existing Trade Mark, or the use of the proposed Trade Mark (once registered) would be too similar to their existing common law rights (on the basis of passing off). Once that formal opposition is filed with the UKIPO, Tribunal Proceedings are commenced and the applicant then has 2 months from the date of service of the opposition, to file its Defence. The UKIPO Tribunal will set directions such as for the provision of witness evidence. Once evidence rounds are concluded, there may be an opportunity for written submissions, before a written decision is handed down. Alternatively, there may be a case management conference, and an in person hearing listed for the UKIPO Tribunal Officer to decide whether the opposition is successful or not. The effect of UKIPO Tribunal proceedings is to determine only whether the application for a Trade Mark should succeed, or not. Importantly, it does not deal with actual use of the proposed Trade Mark. Usually, matters are dealt with on the papers and written decisions are handed down to the parties.
Unlike the usual costs position in the County Courts (whereby usually, the loser pays the winner’s costs) the possibility for cost recovery in the UKIPO Tribunal is limited. Even if a party can successfully oppose an application to register a Trade Mark, it is not guaranteed that costs will follow the event. The UKIPO Tribunal has the ability to award costs to the winning party, but usually, those costs are capped to a fixed scale. Though the winning party can request that the Tribunal awards costs ‘off the scale’, its ability to award costs off the scale (to approach full compensation in appropriate circumstances) is intended to deal proportionately with wider breaches of rules, delaying tactics or other unreasonable behaviour by the losing party. It is a high barr to meet to obtain off the scale costs and usually, a successful party should expect to recover only nominal, scaled costs.
The recent high profile matter of Red Bull GMBH -v- Bullards Holding Company Limited demonstrates this opposition process. This matter concerned Red Bull opposing Bullards’ (Gin) application to register a Trade Mark. Red Bull said that Bullard’s proposed Trade Mark ‘Bullards’ as a series of 2 Trade Marks in respect of class 32 and class 33 goods, was too similar to its own 3 earlier marks for identical/similar goods and services, each of which included the word ‘Bull’. Further, Red Bull said that the use of the Trade Mark ‘Bullards’ would damage its reputation. The UKIPO, in its decision dated 25th October 2022, was not convinced that ‘Bull’ and ‘Bullards’ was confusingly similar, or that it would cause damage to Red Bull’s reputation. The UKIPO could see no reason why the co-existence of ‘Red Bull’ and ‘Bullards’ was not possible, as the marks were ‘too different to make this a real issue’. That opposition by Red Bull failed and the parties have now been directed to make written submissions on costs. The UKIPO is yet to determine whether Red Bull should have to pay Bullards costs, on or off the scale.
UKIPO Tribunal opposition proceedings concern complex areas of law, but litigants must bear in mind the potential cost limitations within that forum. We have experience in successfully dealing with this type of litigation, and have very recently successfully opposed a Trade Mark application and obtained an Order for costs for our client. However, any party engaged in this litigation has to do so with the expectation of not recovering compensatory, but only contributory costs, if they are successful. This cost limitation of course has benefits should the opposition fail. However, it is very important to have this principle firmly in mind from the commencement of opposition proceedings and further, to seek expert advice on your prospects of succeeding, before embarking on this process.
Do not hesitate to get in touch for an initial, no obligation consultation to discuss any Trade Mark or other Intellectual Property queries.