Opposing Third Party Registrations
As the owner of a registered trade mark, you are entitled to oppose the registration of a later trade mark on the same grounds as those available for trade mark infringement.
Namely you would be entitled to object to the registration of a later trade mark if the later trade mark is
- identical to your earlier registered trade mark for identical goods or services;
- identical or similar to your earlier registered trade mark for identical or similar goods or services or there is a likelihood of confusion;
- identical or similar to your earlier mark which has a reputation the use of which would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark.
These three grounds are known as “relative” grounds for refusal of registration of a trade mark.
As the owner of a registered trade mark, you would also be entitled to oppose the registration of a later trade mark where it can be shown that its use would amount to passing off. However, for the evidential reasons set out above, it will generally be easier to rely on the relative grounds referred to in the previous paragraph.
Moreover, the UK and European trade mark registries would generally notify you where they believe that a new trade mark application by a third party may be identical or similar to your registration. Accordingly, you would have the opportunity to consider whether to oppose such application on relative grounds. The UK and European trade mark registries will not notify the owners of unregistered trade marks and therefore, if you do not have a registered trade mark in place, you will not be made aware that a third party is seeking to register rights in an identical or similar trade mark.
For more information on opposition proceedings, please refer to the Infringement and Enforcement section.