New Lower Cost Route for UK Trade Mark Oppositions

Cost is often a barrier to bringing trade mark opposition proceedings (and therefore to protecting brands) against third parties. Although conventional trade mark oppositions are less expensive than many other types of legal proceedings, and any cost award made against the losing party is subject to a relatively low cost cap, the potential cost of opposing a trade mark can be prohibitive for some.

The key advantages of filing a Fast Track opposition relative to conventional oppositions are:

Reduced official fees – the official fee for filing a Fast Track opposition is £100, which is 50% of the cost of filing a conventional opposition.

No requirement to file evidence – as with conventional oppositions, if your trade mark registration is less than 5 years old, there is no need to provide any evidence of use of the mark when filing the opposition. A decision will be based purely on a comparison of the competing marks and goods/services. This can significantly reduce the amount of time your attorney spends on the case, which in turn helps to reduce costs.

Quicker – a Fast Track oppositions should be decided within 1 to 7 months (taking on average 3 months), meaning that a registered trade mark owner if successful can quickly prevent a third party from registering an identical or confusingly similar mark, and nip any unauthorised or harmful use in the bud. The issuance of the first decision in conventional oppositions can often take up to 2 years.

Costs cap – the maximum costs that can be awarded against a losing party in Fast Track opposition proceedings is £500. The average cost award for a Fast Track opposition is £460, compared to the average cost award of £1,235 in standard oppositions, though this can be as high as £5,600.

The UK Fast Track opposition service offers registered trade mark owners a relatively straightforward, expedient and cost-effective mechanism by which to enforce their brands in the UK, and aims to reduce the cost and time expended relative to conventional oppositions.

It should be borne in mind that in order to most effectively enforce trade mark rights against third parties in the UK, brand owners require registrations for their trade marks. It is therefore always worthwhile periodically reviewing your trade mark portfolio to ensure your important trade marks are protected in the UK, and other significant markets.

If you have any questions concerning the Fast Track opposition service, or would like more information about the benefits of applying for trade mark registration, please get in touch with your usual trade mark contact at Swindell & Pearson, or with Natalie Dyer at [email protected]. Natalie is a trade mark advisor and is based at our head office in Derby.