Trademark Academy

What happens if someone opposes my trademark application?

One of the stages of the trademark registration process is trademark publication for oppositions. During this relatively short window, owners of previously registered trademarks as well as entrepreneurs in general have the right to raise oppositions against new trademark applications. On average, oppositions are raised in approximately 5% of the new applications.

The principal reason for raising an opposition revolves around the perceived similarity between the previously registered trademark and the new application which could potentially damage the owner’s reputation and create consumer confusion.

Once the opposition is received, the applicant can choose whether or not they wish to address the opposition (either via an amicable agreement or in a legal proceeding) or whether they wish to abandon the trademark application (and lose all fees paid to the IPO).

The best approach for addressing an opposition really depends on the specific circumstances but based on our experience, there are three general approaches that can be taken:

  1. Limit the selection of goods & services in trademark application: This ensures that the two brands do not overlap in the products / services offered to the consumers and hence their perceived similarity is not a real problem

  2. Sign a co-existence agreement: There are numerous co-existence agreements in place between similarly sounding brands, clarifying the extent to which they can utilise their trademarks in specific contexts and countries

  3. Challenge the opposition: When it comes to renown brands in particular, even a minor similarity of the new trademark application to the established brand can result in an opposition. In numerous cases, such oppositions can be successfully challenged as they lack a sufficient merit that the co-existence of these two brands would result in consumer confusion since both brands operate in completely different industry sectors

The success rate of dealing with an opposition varies based on the risk profile for individual trademark applications. This is why Trama starts with a free lawyer’s check, providing a transparent assessment of the chances for a successful registration of a given trademark for each client. In the result of this free lawyer’s check, our clients can also find the success rate figures based on our vast experience.