UK Intellectual Property Office is an operating name of the Patent Office

Filing an online notice of defence and counterstatement in opposition proceedings

procedure demonstration

UK Intellectual Property Office is an operating name of the Patent Office

Introduction

Introduction PageThis page outlines the requirements for using the online service. This includes:SSL-enabled browser for secure connection•technical specifications;•information requirements for completing the service;•Help and Support information and contact details.•Links to the TM Act and Rules

UK Intellectual Property Office is an operating name of the Patent Office

Step 1 – About You

About YouThis first screen asks you to enter contact details. This enables us to get in touch with you if we have any queries about your filing.

Fields with labels in bold are mandatory and must be completed.

You must give us an email address for auto-confirmation purposes.

Your reference is a reference that we will use whenever we contact you.

UK Intellectual Property Office is an operating name of the Patent Office

Step 2 – Opposition Number

Opposition NumberHere we ask you to enter the opposition number under which the proceedings involving your mark are being conducted.

This number will be shown on any related correspondence we have sent to you.

UK Intellectual Property Office is an operating name of the Patent Office

Step 3 - trade mark number

Trade mark NumberHere you are asked to enter the trade mark number which is under oppositionYou should enter the mark number and say if it is a UK or International (UK) mark. The system will retrieve details of your mark for you.If the retrieval service is temporarily interrupted by maintenance work you will be given an alternative screen asking for the applicant name and lowest Nice class as validation of the correct mark details.

UK Intellectual Property Office is an operating name of the Patent Office

Step 4 – trade mark details

Trade Mark detailsBy entering the mark number on the previous page we will display it’s details by retrieving them from our records. If the details returned are incorrect, you can return to the previous page and amend your entry.

If the retrieval service is temporarily interrupted by maintenance work you will be given an alternative screen asking for the applicant name and lowest Nice class as validation of the correct mark details

UK Intellectual Property Office is an operating name of the Patent Office

Step 4 – Proof of Use

Proof of UseIn response to the notice of opposition to your mark, you can request that your opponent provides proof that their mark (if they claim infringement against an earlier registered mark in use) is used for the goods and services it claims to be used for.

UK Intellectual Property Office is an operating name of the Patent Office

Step 5 - Counterstatement

CounterstatementHere you must post your counterstatement. This is a mandatory requirement for filing.

Counterstatements are often lengthy so we advise you to have a version ready to cut and paste into this box. This avoids lengthy typing.

UK Intellectual Property Office is an operating name of the Patent Office

Step 6 – Agent/AFSAgent/AFSHere we ask for the address where we should send any related correspondence. The address for service can be the professional representative of the proprietor of the trade mark under opposition or an address for service in the UK if the proprietor is a non UK resident or company.If you have recorded your address with us you can simply enter the official customer id (ADP) number and we will retrieve your address details for confirmation.If you do not have (or know) your customer id (ADP) you’ll be given a screen to enter your address details.

UK Intellectual Property Office is an operating name of the Patent Office

Step 7 - DeclarationDeclarationYou must declare your intention to file the form and therefore raise notice of defence and counterstatement for their mark.

This is equivalent to a penned signature on a paper format.

UK Intellectual Property Office is an operating name of the Patent Office

Step 8 – Submission

Submission This page displays summary details of your proposed filing onscreen. You can print the form to review it before submitting.

There is no fee for filing a notice of defence and counterstatement.

UK Intellectual Property Office is an operating name of the Patent Office

Completion

CompletionOnce submitted you will be given a completion page. This confirms that you have filed the form, gives you a filing reference, and allows you to print the form for your records.