The trademark registration process doesn’t end after you file your application. After your application is examined by the Intellectual Property Office (IPO), it is published for opposition. At this stage, third parties can challenge your application by filing an opposition, sending a cease and desist (C&D) letter, or both. In this situation, it’s crucial to act promptly and strategically to defend your trademark.
Trademark application submitted The application is filed with the IPO, which examines it for registrability. If everything meets the requirements, the application is published for opposition.
Opposition period begins
During the opposition period, third parties can challenge your trademark.
No opposition: If no opposition is received during this period, the trademark progresses to registration. Depending on jurisdiction, additional formal steps, like submitting the statement of use of the trademark, may be required.
Challenge received: It indicates that the owner of the earlier trademark believes your trademark infringes on their rights. The challenge may come in the combination of:
Cease and desist letter: A warning of potential conflict and opposition. Notice of threatened opposition: A formal warning of potential opposition. Opposition: A formal challenge filed with the trademark office.
3. Legal assessment
Within one week of receiving a challenge, a free legal assessment is conducted by our legal team, and usually, one of the three strategies is recommended:
Strategy 1: Negotiate co-existence - resolving the matter amicably through negotiations. This approach is typically faster and more cost-effective.
Strategy 2: Defend in opposition - engaging in formal opposition proceedings to defend your trademark.
Strategy 3: Withdraw the application - abandoning the application to avoid further costs.
For more information about the strategies and your options, please visit the chapter “ Your options explained”
Strategy confirmation - action is required
As the applicant, you should not ignore a challenge and choose one of the recommended strategies. Failing to respond may result in losing the trademark or incurring additional costs.
Execution of chosen strategy
The execution depends on the selected strategy. For more information about our process please visit the chapter “ Our process”. It is important to note, that trademark defense is dynamic, and you can adjust your strategy mid-process based on new developments or negotiations. This flexibility ensures that you can adapt to the situation as it evolves.
Key considerations
Action is mandatory
Applicants must respond to challenges to avoid losing by default or incurring costs. However, certain scenarios, like receiving opposition in the EU, may allow a strategy where no active defense is filed, relying on procedural defaults to win. This option should always be considered in consultation with a lawyer.
Handling potential threats
If only a C&D letter or notice of threatened opposition is received (and no formal opposition is filed), you may wait and see if an opposition materializes. This strategy should also be discussed with your lawyer.
Flexibility in strategies
Applicants can switch strategies mid-process based on new developments. For example, if negotiations fail, you can move to defend in opposition, or vice versa. You can also withdraw your trademark application anytime.