Purpose of opposition and negotiating a settlement – a strategic tool
Applying to register a trade mark usually means the applicant has a commercial interest in the mark and may start or continue to use it. As such opposing an application can be a useful means of helping to prevent or limit use of the mark in question, avoid dilution of an earlier mark, and deter other third parties from adopting similar marks in future.
Where a mark is widely used by members of the trade, an opposition can also be used to preserve competition prevent a single competitor gaining rights in a term of interest to many other entities.
It is common for parties to explore options for amicable settlement of oppositions to avoid cost, uncertainty, further disputes, and provide each other with important commercial reassurances about each other’s activities. Often this can involve international agreements to avoid opposition proceedings in multiple jurisdictions. Further information on how to approach this in UK and EU Oppositions is provided below.
Cooling off periods
The EUIPO and UKIPO have dedicated “cooling off periods” in opposition timetables to allow parties to negotiate. Extending these periods effectively “suspends” the oppositions while parties may negotiate.
At the EUIPO, the parties have an automatic 2-month period to explore amicable settlement negotiations before adversarial part of the proceedings begins and, on joint agreement, can request to extend this by 22 months.
At the UKIPO, the parties have two months to decide whether to enter a cooling off period and may enter into a formal cooling off period for a further 7 then 9 months on joint request.
In both jurisdictions, either party can opt to unilaterally withdraw from the cooling-off period at any point (for example, if negotiations are not progressing).
To formalise settlement arrangements the parties may execute agreements to provide assurances about future activities.
The agreements may determine how the parties’ marks are to be used and/or registered and in respect of which goods and services. The territory will also be listed and where oppositions cover the UK and EU ideally the scope of the agreement should cover both.
In some cases, parties may prefer to keep obligations in written agreements to a minimum and simply seek limitations to the scope of protection covered by relevant trade mark applications to provide some reassurance. This can be especially useful where parties cover broad terms such as ‘computer software’ under their trade mark applications for example.
Post settlement arrangements (e.g. transformation, division, limitation)
If a settlement is reached, the Applicant may be required to limit the goods/ services covered under the application(s) or even withdraw the application(s). These changes are recorded on the trade mark registers. Likewise the Opponent may need to withdraw their opposition(s).
If an agreement is signed between the parties then it is very important the details are shared with relevant at the parties and that they are vigilant to ensure compliance with terms.