Defending a UKIPO Trademark Opposition: TM7 → TM8 → Decision

Trademark opposition is a formal Tribunal action under section 38 of the Trade Marks Act 1994 in which a third party objects to the registration of a published mark. For the applicant on the receiving end, opposition is high-stakes: a successful opposition kills the application, the costs are awarded against you, and the months you have invested in the brand may need to be redirected.

This guide walks through every stage of UK opposition defence, from the day the Notice of Opposition arrives to the final decision (and any appeal), with all the relevant procedural references and the practical points that matter most.

Receiving the TM7: what just happened

A Notice of Opposition (Form TM7) is a formal pleading filed by an opponent under TMA 1994 s.38. It is served on the applicant by the UKIPO together with a covering letter setting out the deadline for filing the Notice of Defence and Counterstatement.

The TM7 should contain three things:

• The grounds. The legal basis on which the opponent says your mark should not be registered. The most common grounds are relative grounds under TMA 1994 s.5 (conflict with an earlier mark) and absolute grounds under s.3 (lack of distinctiveness, descriptiveness, bad faith).
• The earlier rights. If the opposition is on relative grounds, the opponent must identify the earlier mark or rights they rely on, including registration numbers, the goods and services covered, and the dates.
• A statement of case. A clear summary of the factual and legal basis for the opposition.

A fast-track opposition (Form TM7F) is a streamlined procedure limited to s.5(1) and s.5(2) grounds, using up to three registered earlier marks and with no evidence rounds. Fast-track oppositions move faster but are limited in scope. Standard oppositions (Form TM7) can rely on any combination of grounds.

The 2-month deadline that cannot be extended

Under TMR 2008 rule 18, the applicant has two months from the date the TM7 is served to file a Notice of Defence and Counterstatement (Form TM8). This deadline is rigid in three important respects:

• It cannot be extended unilaterally. Unlike many UKIPO deadlines, the TM8 deadline is not extendable on application by one party alone. The only way to get more time is a joint cooling-off period under rule 18(8), which requires the opponent's consent.
• Missing it means abandonment. If no TM8 is filed within the two months (or the cooling-off period), the application is treated as withdrawn under TMR 2008 rule 18(2). There is no automatic right of restoration.
• The two months is calendar months from service. If the TM7 is served on you on 3 March, the TM8 deadline is 3 May. The UKIPO calculates this automatically and includes it in the covering letter, but always double-check.

This deadline is why opposition is genuinely urgent. From the day a TM7 is served, every working day matters. Solicitor-led opposition defence (such as Western Legal's £1,200 fixed-fee opposition defence service) starts with calendaring the deadline and working backwards to ensure the TM8 is filed comfortably ahead of it.

Filing Form TM8: the counterstatement

The TM8 has two parts. The first is the Notice of Defence, which is a tick-box indication that you wish to defend the opposition. The second is the Counterstatement, which is a pleading responding to the opponent's statement of case.

The Counterstatement must:

• Admit or deny each material allegation in the statement of case. Anything not denied is treated as admitted.
• Set out the applicant's positive case in response to the opposition.
• Put the opponent to proof of use of the earlier mark, if the earlier mark was registered more than five years before the application date. This is one of the most powerful tools in the applicant's defence (see below).
• Identify any positive defences the applicant wishes to rely on (e.g. honest concurrent use, acquiescence).

A poorly drafted Counterstatement is the most common reason a winnable defence is lost on procedural grounds. Failing to put the opponent to proof of use, for example, means the opponent does not have to prove genuine use of their earlier mark, which loses one of the strongest tools available.

There is no UKIPO fee to file the TM8.

Cooling-off and settlement (Form TM9C)

If both parties agree, they can jointly file Form TM9C to enter a cooling-off period under TMR 2008 rule 18(8). The cooling-off period extends the proceedings to a total of nine months, giving the parties time to negotiate settlement without active Tribunal proceedings.

Cooling-off is often a sensible step where:

• The opposition is on relative grounds and a coexistence agreement might be feasible
• The applicant is willing to narrow the specification to remove the alleged conflict
• The opponent is willing to withdraw on the applicant making other concessions (e.g. an undertaking on use)
• One side is open to commercial settlement (e.g. payment of a licence fee, transfer of a domain name)

Cooling-off is not the right move where the opposition is meritless or where the opponent has shown no interest in settlement. Filing TM9C signals willingness to negotiate, which can be used against an over-eager applicant.

The 5 stages of opposition

Once the TM8 is filed and any cooling-off period has ended (or if neither party invokes one), the opposition moves through five stages:

1. Pleadings (Months 1-3) TM7 filed by opponent. TM8 filed by applicant. Pleadings closed.
2. Opponent's evidence (Months 3-5) Opponent has up to 2 months from close of pleadings to file evidence supporting its case (witness statements with exhibits). For relative-grounds oppositions, this is also where proof of use is filed if it has been put in issue.
3. Applicant's evidence (Months 5-7) Applicant has up to 2 months to file evidence in response. This is the applicant's chance to challenge the opponent's case, put forward positive evidence (e.g. of honest concurrent use, of distinctiveness, of differences between marks), and prove any factual defences.
4. Opponent's evidence in reply (Months 7-8) Opponent has 1 month to reply, limited to evidence in response to the applicant's evidence. New positive evidence is not generally admissible at this stage.
5. Decision (Months 9-15) Either party may request a hearing under TMR 2008 rule 64, or the matter is decided on the papers. Hearings are listed before a UKIPO Hearing Officer in Newport or London. Written decisions typically issue 2-6 months after the hearing or after close of evidence.

The full process from TM7 to decision typically takes 12-18 months. Decisions are public and published at gov.uk/t-challenge-decision-results.

Common grounds and how to defend each

Section 5(1) - identical marks, identical goods

The simplest opposition: the opponent's earlier mark and yours are identical for identical goods. The defence is usually limited to challenging the identity (visually, phonetically, or conceptually) or limiting the specification to remove the overlap with the opponent's goods. A coexistence agreement is sometimes possible.

Section 5(2) - similar marks, likelihood of confusion

The most common ground. The opponent says your mark is similar enough to its earlier mark that there is a likelihood of confusion, either direct (mistaking your mark for theirs) or indirect (assuming a commercial connection). The defence requires showing that the marks are not similar enough, that the goods are not similar enough, or both. The global assessment test from Sabel v Puma [1998] RPC 199 applies: visual, phonetic, and conceptual similarity, with imperfect recollection. A solicitor-led defence frames the case in terms of the established factors.

Section 5(3) - earlier mark with reputation

The opponent claims its earlier mark has a reputation in the UK (or EU for comparable rights) and your use would take unfair advantage of, or be detrimental to, that reputation. The defence requires showing that the earlier mark does not have the claimed reputation, that there is no link between the marks in the mind of the average consumer, or that any link does not cause unfair advantage or detriment. Reputation cases turn heavily on evidence.

Section 5(4) - earlier rights (passing off)

The opponent relies on an unregistered earlier right protected by passing off. The defence requires challenging one of the elements of passing off (goodwill, misrepresentation, damage) at the relevant date.

Section 3 - absolute grounds

The opponent claims your mark itself is not registrable: lacks distinctiveness, is descriptive, is generic, was filed in bad faith. Absolute-grounds oppositions are less common but harder to defend without evidence of acquired distinctiveness through use.

Proof of use as a defence

If the opponent relies on a registered mark that was registered more than five years before the application date of the contested mark, the applicant can require the opponent to prove genuine use of the earlier mark in the five years immediately preceding the application date (TMA 1994 s.6A).

This is one of the most powerful tools in opposition defence. If the opponent cannot prove genuine use for the relevant goods or services, the earlier mark cannot be relied on, even though it remains on the register. Many opponents over-claim the goods they actually use the mark for, and proof of use forces them to narrow their case.

Proof of use must be requested in the TM8 Counterstatement. It cannot be raised for the first time later. Solicitor-drafted Counterstatements always consider whether proof of use can be put in issue and, if so, request it.

Preparing your evidence

Evidence in opposition proceedings is given by witness statement under TMR 2008 rule 64, exhibited where appropriate. The witness statement must be in proper form (statement of truth, signed and dated) and the exhibits must be properly identified and authenticated.

Common evidence in defence:

• Evidence of honest concurrent use: invoices, marketing materials, sales data showing the applicant has used the mark in the UK alongside the opponent without confusion
• Evidence of differences between the marks: visual, phonetic, or conceptual analysis (sometimes supported by survey or expert evidence)
• Evidence of acquired distinctiveness: market research, sales figures, advertising spend, third-party recognition
• Evidence of the opponent's non-use: where proof of use is in issue and the opponent's evidence is inadequate
• Evidence rebutting the opponent's reputation claim in s.5(3) cases

Evidence preparation is where most opposition defences win or lose. Tribunal Hearing Officers give significant weight to contemporaneous documentary evidence (invoices, marketing materials from the relevant period) and much less to assertions in witness statements without supporting documents.

Costs awards under TPN 1/2023

UKIPO Tribunal costs are awarded on a "contribution-not-compensation" basis under Tribunal Practice Notice 1/2023. The Tribunal applies a published scale that fixes a contribution towards each stage:

• Filing pleadings (TM7 or TM8): £200 - £600
• Filing evidence: £500 - £2,000 per round, depending on volume
• Written submissions or skeleton arguments: £200 - £750
• Hearing attendance: £500 - £1,500 per day
• Total for a fully fought standard opposition: typically £1,500 - £4,000

The Tribunal can award off-scale costs under TPN 4/2007 only where a party has behaved unreasonably (delay, procedural abuse, refusing reasonable settlement offers, frivolous claims). Off-scale costs in trademark opposition are rare.

Costs awards are made in the decision and are enforceable as a judgment debt. They are payable within a fixed period (usually 14 or 28 days) from the date the decision becomes final (i.e. after any appeal window closes).

Litigants in person can recover costs only at the CPR litigant-in-person rate of £19 per hour under TPN 1/2023, far below the published scale. This is one practical reason to use a solicitor: even an applicant who wins as a litigant in person recovers a fraction of what a represented applicant recovers.

Appeals: Appointed Person or High Court

A UKIPO Tribunal decision can be appealed under TMA 1994 s.76 within 28 days of the decision. There are two appeal routes:

The Appointed Person

An independent senior IP barrister whose decision is final and binding. No further appeal. Faster, cheaper, lower-risk. The Appointed Person hears appeals on paper or with a short hearing, and issues a written decision usually within 3-6 months. Costs awards remain on the published UKIPO scale.

The High Court (Chancery Division)

A full court hearing before a High Court judge. Further appeal lies to the Court of Appeal. Slower, more expensive, but allows further appeal if you lose. Costs in the High Court are recoverable on the CPR scale (broadly indemnity costs for a winning party), which can be a significant exposure.

The choice of appeal route is strategic. The Appointed Person is generally the right route for a one-shot appeal on a self-contained point. The High Court is the right route where there is a wider commercial dispute that justifies the costs.

Frequently asked questions

Can I ignore the TM7?

If you ignore the TM7 and do not file a TM8 within two months, your trademark application is treated as abandoned. The opposition succeeds by default and the opponent will be awarded costs (typically £200-£600 for a default opposition).

How much does opposition defence cost?

Western Legal charges £1,200 fixed for a full standard opposition defence covering pleadings, evidence, and submissions to decision. Other firms charge hourly rates that typically total £3,000-£10,000 for a fully fought opposition. More on our opposition defence service.

Can I settle with the opponent without fighting?

Yes, and many oppositions settle. Settlement options include withdrawing the application, narrowing the specification to remove the alleged conflict, entering a coexistence agreement, or commercial settlement (licence, payment). Settlement requires the opponent's agreement and the UKIPO formally records it via Form TM35 (withdrawal of opposition).

What if I find out an opposition has been filed against me late?

Contact the UKIPO and a solicitor immediately. If the TM7 has been served on an old address (because the register has not been updated), it is sometimes possible to apply for the deadline to be extended or for the application to be reinstated, but this is discretionary and not guaranteed.

How long does the whole process take?

A standard opposition from TM7 to decision typically takes 12-18 months. A fast-track opposition (no evidence rounds) takes 4-6 months. An opposition that settles can resolve in 2-3 months.

Does opposition affect my use of the mark in the meantime?

An opposed application remains pending; you have not yet acquired registered rights. You can continue to use the mark in commerce, but at risk: if the opponent has a registered earlier mark and you are infringing it, that is a separate issue from the opposition. Consider whether your use is likely to be challenged in parallel infringement proceedings, particularly if you have received a cease and desist letter.