Case Study: Trade Mark Opposition – Prolox v ProLocks

Steven Mather Solicitor was recently instructed in respect of a Trade Mark Opposition that a client had received. Here’s the background, what happened and how we successfully managed to resolve the matter to the client’s satisfaction.

Our client, Multipoint Lock Shop (MPLS) had sought to register a trade mark which they did on their own without our input. They were seeking registration of the following logo, under the name ProLox;

The ProLox Trade Mark UK00003546061

Unbeknown to MPLS, there was already a trade mark registered by another company using the word and logo ProLock. That entity therefore filed an opposition to the MPLS trade mark registration.

The opposing trade mark ProLock UK00002576574

So what is trade mark opposition?

Once a trademark application has been made, it is published by the Intellectual Property Office for a period of 2 months to allow third parties to comment and/or oppose the application. Here’s what the IPO says about it:

Opposition is the legal procedure that allows you to try to stop a published mark going on to become registered. You can oppose the entire application, or only some of the goods or services it covers.

https://www.gov.uk/guidance/objecting-to-other-peoples-trade-marks-and-the-legal-costs

An opposition can be made under absolute or relative grounds

Absolute grounds cover defects in the trade mark itself. The most common reasons for opposing a trade mark application is that:

  • the trade mark is descriptive of the goods and/or services
  • that it is generic for those goods/services
  • it’s non-distinctive and should be free for everyone in that line of trade to use

Relative grounds means that there exists an earlier trade mark or earlier right (which does not have to be registered) owned by the opponent with which the applicant’s trade mark would conflict if it were used.

Anyone can oppose an application on absolute grounds but only the proprietor of an earlier trade mark or earlier right may oppose on relative grounds.

How do you oppose a trade mark?

If you’re a third party who wishes to oppose a trade mark within the 2 month publication time frame, then you or your advisors should file Form TM7 or Form TM7a if you want to extend the timeframe.

This is a relatively straight forward form which asks for details of your trade mark, the mark you are opposing, and the grounds on which you are opposing.

You should also contact the applicant and set out why you are opposing and see if there is any way of resolving the issues.

The parties have a 2 month “cooling-off’ period, which can be extended by mutual agreement, by filing Form TM9

If you’ve received a Form TM7 opposition, what do you do?

Firstly, I’d strongly recommend taking advice like the above client did!

The best option is always to see if an agreement can be reached. This can be by way of limiting the classes, the specification for example, or agreeing to enter into undertakings to say you will not seek to infringe the other party’s trade mark.

If an agreement cannot be reached, you need to consider whether you want to defend the application. A word of warning – if you do not defend the objection using Form TM8 within the 2 month timeframe given, then your application for a trade mark will automatically be cancelled.

Filing Form TM8 usually leads to a Hearing at the Tribunal Section of the Intellectual Property Officer, where a trained officer will hear both sides arguments and make a decision. If you lose, you’ll likely have to pay some reasonable costs to the other party and vice versa.

Back to the case study….

In the case study above, the client had received notification of opposition on Form TM7 and didn’t know what to do or how to deal with it.

We got involved, and wrote to the other party. They were objecting to certain parts of the application only – and wanted to agree a limitation to the class specification. Their product relates to locking wheel nuts and my client didn’t do that nor did he want to.

We therefore agreed to limit the application, amending it by using Form 23A.

We also agreed to enter into undertakings not to use the mark in respect of locking wheel nuts.

This meant that both parties were happy and the application could proceed.

The client’s trademark will now proceed to full registration.

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