Trademark opposition process in the United Kingdom
Number of UK trademark disputes more than doubled in 2021, partially because of the wave of intellectual property battles triggered by Brexit. A total of 8,080 oppositions were filed in relation to trade marks (including Fast Track options) in 2021 (an increase from 3,830 in 2020).
Source: Intellectual Property Office
The UK left the EU trade mark system in January 2021, meaning that any business wishing to protect a trade mark in the UK now needs to make a separate application in the UK. This has caused a major rush to file trade mark applications, resulting in a surge in the number of oppositions being filed.
Time: In the UK, an opposition which goes no further than the preliminary indication can take around 7 months. A full court procedure, in which evidence is filed, with the opposition being decided after a hearing, can take up to two or three years. There is then also the possibility of appeal, which will further extend proceedings.
Cost: The official fees for filing the Notice of Opposition range between 100 and £200 ($100-250). The losing party will bear all following legal costs of the opposition procedure, which can go up to £1,500 - £2,500 ($1700-3000).
Trademark opposition process in the European Union
In 2021, the number of trademark oppositions received by EUIPO has reached 20,125, a significant increase after remaining unchanged from 2017 to 2020.
Time: The opposition proceedings begin two months after both parties have been notified about the opposition. There is then a cooling-off period of two months which is intended to allow for a quick resolution of the opposition, hopefully avoiding the need to proceed to the adversarial stage. This cooling-off period can be extended if both parties agree, but regardless of the length of extension requested it will automatically be extended so as to bring the cooling-off period to a total of 24 months.
Cost: Official opposition fee is set to €350, while the costs of any additional legal fee can drive the price up to €1,650.
Trademark opposition process in the United States
In the USA, trademark opposition proceeds in a similar manner as a legal trial are filed with the Trademark Trial and Appeal Board (TTAB). While in 2021 there were 6,669 oppositions filed, there were 6,638 oppositions disposed of before a hearing or briefing.
Time: The Notice of Opposition must be filed within 30 days of publication. Then, an answer from the applicant must be submitted within approximately 40 days of the Notice of Opposition. A failure to file an answer will result in the trademark application being abandoned. Once an answer is filed, follows the period when both sides can present their evidence for the case, which can take up to 2 months. Once all evidence is submitted and any oral arguments have occurred, the TTAB will usually issue a decision within six months. The losing party has the right to appeal.
Cost: Notice of Opposition filing fee is $600 per class. All applications carry a 30-day opposition period. Extension requests can be made for 90 days or for a 30-day extension followed by a 60-day extension. Each extension request carries a $100 fee, or $200 for the final 60-day extension.
Trademark opposition process in China
In 2021, China National Intellectual Property Administration (CNIPA) received a total of 473,000 requests for trademark review, a year-on-year increase of 28.8%. Among them, 383,000 were requests for review on rejection, and 90,000 were complicated cases involving both parties. From that, 176,000 were trademark opposition requests, a year-on-year increase of 31.1%.
The active improvement of the prosecution practice and the joint efforts made by the CNIPA and court on improving the consistency of application of laws has made substantial progress – the ratio of revocation of the CNIPA decisions related to rejection appeals and invalidation before the Beijing IP Court was lower than 10% in 2021. While the ratio for non-use cancellation cases still remains high, the general trend appears that courts are no longer as active as they were five years ago, shifting to a very conservative attitude and a much stricter standard in reviewing petitions for court appeals.
Time: The average review time for an opposition in China is 11 months, with the timeframe for a ruling on the opposition taking anywhere from 12 to 18 months on average.
Cost: The official opposition fee is currently set to RBM450 ($66), but the final cost will include all legal fees, which can go up to RMB5,000 (up to approx. $740).