Opposition

Opposition

Opposition is the procedure where a third party may formally object to an application for registration of a trade mark. 

Following the publication of an accepted trade mark in the Official Journal, there is a three month period within which parties may oppose its registration.  For example, if a trade mark is advertised in Journal No 2335 on 14 June 2017, the deadline date for filing opposition would be 13 September 2017. This three month period cannot be extended. 

Before lodging formal opposition, it is recommended that a communication should be addressed to the applicant affording him an opportunity to withdraw his application for registration. In this way, cost of opposition proceedings may be avoided.

Filing Opposition

If you wish to file Opposition to a trade mark, a Notice of Opposition must be filed within three months of publication of the trade mark in the Official Journal.

A Notice of Opposition is a written statement of the grounds on which the opposition is based. This should be submitted to Controller of Intellectual Property, Intellectual Property Office of Ireland, Government Offices, Hebron Road, Kilkenny and must be accompanied by the prescribed fee of €60.  Opposition can be filed by email to tmopp@ipoi.gov.ie or submitted with the fee through our OnLine Payments System on the website .  

There is no standard application form for filing opposition.  A Notice of Opposition should contain the following information:-

• The Opponent's name and address,
• The grounds on which the opposition is based,
• Details of the Opponents trade marks, if relevant,
• It should be signed and dated.

Section 43(2) and Rule 18 of the Trade Marks Act and Rules, 1996 refers.

A copy of the Notice of Opposition will be forwarded to the applicant of the trade mark in question.

If opposition is filed against your trade mark application

If opposition is filed against your trade mark application, a copy of the Notice of Opposition will be forwarded to you and you will be given the opportunity to reply to the opposition by filing a Counter Statement to the opposition.  If you do not file a Counter Statement your application will be deemed to have been withdrawn.

Filing evidence in Opposition Proceedings

Following the filing of a Notice of Opposition by the opponent and a Counter Statement by the applicant, both parties will be given an opportunity to file evidence. 

• Firstly the opponent is required to file evidence in support of their opposition, a copy of which must be sent to the applicant.
• The applicant is then given the opportunity to file evidence in support of their trade mark application, a copy of which must be sent to the opponent. 
• The opponent has a final opportunity to file evidence in reply to the applicant’s evidence. 

All evidence must be filed by way of Statutory Declaration (Statutory Declarations Act, 1938 refers).

Upon completion of the evidence filing stage, both parties are requested to elect whether they wish to attend a hearing or file written submissions in lieu of attending at a hearing, before a decision is made by the Office on whether or not the trade mark will be allowed to proceed to registration.

Awards of Costs in Trade Mark Opposition Proceedings

The Controller may order that costs be paid to one or other of the parties to the opposition proceedings.

The general practice of the Office is to address the question of costs following the determination of opposition proceedings only if one or other party raises the matter and requests an award of costs in its favour.  In that event, the party seeking the award of costs is required to state the grounds on which it relies and the other party is afforded an opportunity to reply before a decision is taken.  The general rule is that costs follow the event and the amount of costs to be awarded is calculated by reference to an indicative scale specifying standard amounts for particular aspects of the proceedings, e.g. filing notice of opposition, preparing evidence, etc.  Official fees, if any, incurred in the proceedings are also refunded as part of the award of costs.

In keeping with the policy objective that, in determining trade mark opposition proceedings, the Office should function as a low-cost tribunal.  The potential cost to the losing party is thereby kept relatively low, facilitating actions by small and medium-sized enterprises and giving companies and individuals greater certainty in budgeting for the costs that they might incur in initiating or defending opposition proceedings.

The use of an indicative scale is not, however, determinative of the amount of costs that may be awarded in a given case.  The overriding requirement is that costs should be assessed in a judicial manner, having regard to the particular facts of the case in hand.  The factors taken into account in making that assessment include the relevance of claims made in notices of opposition and whether such claims are subsequently substantiated or abandoned, the likely cost of preparing evidence (including research and retrieval of records, costs of surveys, hiring of investigators, etc.), the relevance of the evidence to the matters at issue between the parties and the timeliness of filing of the evidence.  A global assessment is made in every case having regard to all of the relevant factors and it may be that, in particular cases, it will be appropriate to award costs "off the scale", either above or below the standard maximum or minimum amounts, as the case may be.

Indicative scale of costs in trade mark opposition proceedings (effective from 1 January, 2008)

Opponent Successful

Applicant Successful