RESPONSE TO TRADEMARK OPPOSITION
Our team can assist you to save your trademark when there are objections raised by other trademark owners.
Has your trademark application received an opposition in the EU or across the Globe?
Our team of trademark lawyers are based in our offices in Greece, the UK, Australia and New Zealand. When you apply for a trademark, it is possible for owners with existing trademarks to come forward and challenge your application. They usually do this when they believe your trademark application infringes on the rights they have through their trademark. Not all oppositions are accepted by the IP office and there are often ways to save your trademark even if you have received an opposition. Our team of lawyers will work with you to understand your application, assess your case and assess the merits and credibility of the opposition. We cover all jurisdictions including the UK, EU and USA.
Strategies to deal with a trademark opposition
There are a number of strategies you can adopt in order to deal with a trademark opposition. These include:
- Limiting your goods and services. This can be a good strategy, particularly when the opposition is focused on a particular good or service. You can look at limiting your class of goods or services in order to avoid the opposition.
- Signing a co-existence agreement: Our lawyers are experienced in co-existence agreements. It involves approaching the opposing party and exploring and negotiating the possibility of signing a co-existence agreement.
- Directly challenging the opposition: Our lawyers can assist you in directly challenging the opposition. Depending on the case, we will help you put forward your challenge to the opposition, even if the challenge comes from a well established brand.
Pricing and fees for challenging an opposition to your trademark application
The fees we charge in opposing a trademark depend on the type of opposition and the amount of time we need to spend on it. We generally work with you to find the most cost effective solution. Contact our team to discuss your application and case and we will revert back with our recommended solutions and costs.
Can my trademark be challenged in the EU or UK if it’s already registered?
Yes. Well – someone can file a ‘cancellation request’ if they have a reasonable basis for arguing that they were damaged by the registration of your trademark. If they start proceedings, it doesn’t mean your trademark will be cancelled. It is a process, and trademarks are generally not cancelled that easily.
Can a competitor in the EU or across the globe oppose our trademark application even if they themselves do not have a registered trademark?
Yes – they can oppose your trademark if they don’t have a trademark registered in your class – however, they may have a trademark registered in a different service or class. It’s usually due to the potential and likelihood of confusion. This makes sense as the company that opposes your trademark may have a trademark which is similar and they may have a well established brand which they wish to protect and could be concerned about confusion. Our legal team can advise you on how to manage this.
Who may oppose a trademark application?
Someone who has an interest in the outcome of a trademark application can oppose a trademark. Most of the time it’s an entity with an earlier or similar trademark. Usually the IP offices put weight on oppositions of trademarks which are filed by owners of existing trademarks.
