How to Prepare a Successful Defence to a Trademark Opposition

how to prepare a successful defence to a trademark opposition

Have you received a notice of opposition in relation to your brand from a third party, but don’t know where to start? Then answer these 5 questions to help you prepare a successful defence to a trademark opposition.

Once an opposition has been filed against your trade mark application, it is worth considering how you should respond. Here’s how to make sure you hit the ground running with a strong defence!

Start with the basics

To prepare a successful defence to a trademark opposition you need to get the basics right in the first instance. For that, you need to collect together information about your brand and your business.

  1. Who? – Who is the opponent? What do they do?
  2. What? – What do you and your business offer? What use have you made of your brand? What evidence do you have?
  3. Why? – Why do you feel you need to prepare a defence?
  4. How? – How do you decide what to admit and what to deny?
  5. When? – When is the deadline to file a defence? When is the best time for you and your business to get a trademark professional onboard?

This will help you get a clearer idea of what you hope to achieve from your defence. For example, your answers to question 1 is a good place to start to determine whether you regard the opponent as a direct competitor or a business in a different industry.

Defence and counterstatement

Unless a form of co-existence can be reached with the opponent, you should file a defence and counterstatement if you wish to continue your trade mark application. Although you may have many reasons for filing a defence, protect your brand is likely to be your priority.

You should consider what you will admit, not admit, or simply deny in response to the allegations made in the opposition notice. A strong defence often has a mix of admissions and denials in order to focus the parties’ attention on the contentious issue. For example, you may deny an allegation of the existence of a likelihood of confusion between the marks.

D-Day

Importantly, don’t forget to file your defence and counterstatement by the set deadline! Otherwise you risk the abandonment of your trade mark application. You should therefore keep in mind the time it takes to prepare a successful defence to a trademark opposition.

With these 5 questions, you have much of the information you need to get your trademark opposition defence started. You should use this information as a guideline when briefing your trademark lawyer preparing your defence. Make sure to give all available information, whether you think it is relevant or not, to ensure you put your best defence forward. Good luck!

For further information or advice on how you can defend a trademark opposition, please contact us.

Tidman Legal is an Edinburgh-based intellectual property and business law firm, specialising in helping small businesses protect their brands and innovations.