Threatened Trade Mark Opposition - What to Do Next
You have filed a UK trade mark application, it has been published, and now a letter arrives from another brand owner's solicitors, often alongside a notice of threatened opposition (Form TM7A). They say your mark is too close to theirs and they will oppose it unless you withdraw your trade mark application.
One in ten trade mark applications are opposed. So this is common, it is often negotiable, and it is rarely the end of the road.
What a threatened trade mark opposition means
Once a UK application is published, third parties have two months to oppose it. They can extend that to three months by filing a notice of threatened opposition (Form TM7A), and many letters arrive during this window.
If a formal opposition (Form TM7) is filed, you will be notified and then there’s a two month window to file a defence or enter into a cooling off period. With the agreement of both sides this can be extended to nine months, and in some cases to 18 months, to allow settlement talks. If no settlement is reached, you must file a defence and counterstatement (Form TM8) or your application will be treated as abandoned.
How to assess a threatened opposition on its merits
You need to consider:
What rights do they actually have? Check the earlier registration: its date, the goods and services it covers, and whether it is a UK mark, a comparable mark derived from an EU registration, or simply unregistered goodwill.
How similar are the marks? The comparison is visual, aural and conceptual, judged through the eyes of the average consumer. Shared elements that are descriptive or common in the sector carry less weight.
How similar are the goods and services? A near-identical name may be fine if the businesses operate in genuinely different markets.
Have they used their mark? If the earlier mark had been registered for five years or more when you filed, the opponent can be required to prove genuine use of it. Many broad registrations fall away at this stage (see our guide to revocation for non-use).
Is reputation being claimed? Well-known brands often rely on reputation or passing off as well as confusion. These claims need evidence, and the evidential burden is on the opponent.
This assessment usually tells you whether you face a real risk, a partial overlap that can be designed around, or an overreach.
Options for responding to a threatened trade mark opposition
Most threatened oppositions end in one of five ways:
Narrow your specification. Often the real concern is one or two classes or terms. Deleting or limiting those can remove the objection while protecting the core of your business.
Agree coexistence. A written agreement can set out how each party will use its mark, for example by field of business, territory or get-up. It gives both sides certainty and avoids litigation costs.
Stand firm. If the objection is weak, a reasoned reply explaining why can be enough to make the other side think again. If they do oppose, you defend it.
Counter-attack. If their registration has not been used, or should never have been granted, an application to revoke or invalidate it can shift the balance of the negotiation considerably.
Rebrand. Sometimes the risk is real and the investment in the name is still modest. Changing course early, perhaps with an agreed transition period, can be the most commercial answer.
The right option depends on the strength of both cases, what the name is worth to your business, and how much appetite each side has for a dispute.
How much does a UK trade mark opposition cost?
UK IPO oppositions are far cheaper than court proceedings. The loser usually pays a contribution to the winner's costs, but awards follow a published scale and rarely cover the full spend. That modest exposure is one reason many businesses are prepared to defend a sound application, and one reason most disputes settle.
Common mistakes to avoid
Ignoring the letter. Silence rarely makes the problem go away, and it can harden the other side's position.
Replying in haste. An off-the-cuff email can contain admissions that are later used against you.
Conceding too much. The first demand is often the opening position, not the bottom line
How we can help
At InHouse IP, we regularly act for businesses on both sides of threatened oppositions. We can review the letter, assess the strength of the objection, and advise on the most commercial route, whether that is a firm reply, a negotiated settlement or a defence before the UK IPO. Find out more about our disputes work.
If you have received a letter threatening opposition, get in touch as soon as possible so that deadlines are protected from the outset.