Many people may be aware of the opposition process after the publication of a trade mark application, which allows a third party to oppose a trade mark application on the basis of earlier rights. Less known, however, is the process of filing so-called ‘observations’ at the UKIPO or EUIPO. This is another way in which a business or individual can take action to try and stop a trade mark application proceeding to registration.

Although much less common than directly opposing an application, there may be a variety of reasons why filing observations would be preferable to pursuing opposition proceedings. In particular, one benefit to filing observations is that they can be filed anonymously. This is in contrast with filing opposition proceedings where the owner of the Application is always given details of the Opponent. In certain cases, the transparency of the opposition process may open up the possibility for counter action to the Opponent. The anonymity of filing observations may therefore be beneficial for third parties who do not wish to make themselves known but still wish to object to a trade mark application.

When filing observations, third parties can anonymously put forward arguments that the mark should have been refused by the trade mark office on absolute grounds, for example where the mark is descriptive of the goods or services covered in the application. This contracts with the opposition process at the EUIPO which permits objection only on the basis of an earlier right, on relative grounds.

If the trade mark office decides that the observations are well-founded, the Examiner will issue an objection, and may eventually refuse the application. Applicants will be given copies of the observations filed and have the opportunity to respond.

In the right circumstances, filing observations can lead to a successful outcome in terms of stopping a trade mark application from reaching registration, and Brookes IP can proudly point to a 100% success record in stopping those applications for which we have filed observations progressing to registration.

If you would like more information on the filing of observations, please get in touch.