Protecting Brand Identity: Resolving Trademark Opposition Risks

We recently assisted a growing technology business in securing registered trademark protection for its core brand, following challenges from established rights holders.

The client had applied to register a UK trademark for a logo incorporating a textual element and a graphic feature. The application initially covered a broad range of electrical and energy-related goods, reflecting the client’s desire to future-proof its brand as the business developed.

After publication, the application attracted formal opposition from third parties with earlier registered trademark rights in overlapping areas. The opponents alleged that the marks and goods were sufficiently similar to give rise to a likelihood of confusion under the Trade Marks Act 1994.

Our Approach

Our objective was to protect the client’s commercial interests while avoiding the cost and uncertainty of contested tribunal proceedings.

Early strategic assessment
We reviewed the competing marks and the respective commercial activities of the parties. While there was some overlap in the wording of the goods as filed, the client’s actual business focus differed from that of the opponents. This allowed us to identify a pathway to resolution through narrowing and clarification, rather than litigation.

Procedural strategy
We took steps to create breathing space within the opposition process, enabling constructive discussions to take place without immediate procedural pressure.

Targeted amendment of the specification
Working closely with the client, we proposed voluntary amendments to the trademark specification. This involved removing or narrowing goods that were not central to the client’s business, while retaining appropriate protection for its core activities. The amendments were carefully drafted to reflect the client’s genuine commercial use and future plans.

Commercial negotiation
We engaged in without-prejudice correspondence with the opposing parties to address their concerns and reach a commercially sensible outcome. This included clarifying how the client’s mark would be used and ensuring that the revised scope of protection avoided conflict with the opponents’ established activities.

Throughout the process, we provided clear advice on risk, cost exposure, and commercial trade-offs, enabling the client to make informed decisions aligned with its business objectives.

The Outcome

Following the agreed amendments and negotiations, the opposing parties withdrew their objections. The trademark application was permitted to proceed and was ultimately registered for a refined list of goods aligned with the client’s business.

The client secured enforceable trademark protection for its brand without the delay, cost, or disruption of contested proceedings, allowing it to continue developing and marketing its products with confidence.

Contact Us

If you are facing a trademark opposition or would like advice on protecting your brand, please contact us at wewillhelp@jonathanlea.net. We are happy to offer an initial no-obligation consultation to discuss your options.

Disclaimer: The case studies on this website are provided for illustrative purposes only and do not constitute legal advice. All identifying details have been removed or altered to protect client confidentiality. Outcomes described are specific to the circumstances of each case and may not be indicative of future results. You should seek independent legal advice before taking any action based on the information provided.