Received a Notice of Threatened Opposition? What to Do Next

Receiving a notice of threatened opposition can feel like a sudden roadblock in your branding journey, especially after you’ve invested time and capital into your new identity. However, this isn't the time to panic – it’s the time to get strategic.

It’s key to understand the purpose of the notice and your options because trade mark fees are rising from 1 April 2026, and you will benefit from the lower fee if you have registered your application before that date.

What is a notice of threatened opposition?

Essentially, it’s a formal notification from a third party warning you that they are considering filing a formal opposition against your trade mark application.

Crucially, filing the notice does not commit the third party (named the opponent) to a full legal battle. It does not even kickstart proceedings. Instead, it serves 3 specific purposes for the opponent (you):

1. A “heads up”: It puts you on notice that a potential claim exists.
2. Buying time: It automatically extends the initial 2-month opposition period to 3 months, giving the opponent more time to build their case or talk to you.
3. Cost protection: By warning you, the opponent protects their ability to claim legal costs later if they file a formal opposition and win.

Why do they want to challenge my application?

Do not automatically assume the party filing the notice has a winning case or even fully understands the legal landscape. They may be trying to protect their brand as a routine business practice to avoid brand dilution.

The UK Intellectual Property Office (IPO) does not automatically stop trade mark applications that might infringe other trade marks from proceeding through the registration process – they leave it to brand owners to “protect their patch”. An opposition is usually based on one or more of the following grounds:

• Relative grounds – prior rights: That your mark is identical or substantially similar to an existing trade mark, and your goods/services overlap. This does not have to be a registered trade mark, but also an unregistered trade mark.
• Absolute grounds – inherent defects in the application: The opponent may argue your application should not be registered because it is descriptive (it describes what you sell, e.g. COLD BEER for beer), is generic (uses terms commonly in your industry e.g. ESCALATOR for a moving staircase) and lacking distinctiveness (it isn’t unique enough to function as a brand). You can read our insight here for more information.

Could the notice of threatened opposition be a bluff?

It could well be, and you can understand more by instructing a solicitor.

In many cases, the notice is a strategic tool rather than a definitive commitment to legal action. The opponent may file a notice strategically to encourage settlement talks and open a dialogue before formal (and expensive) proceedings are required.

The result of waiting to see whether the notice is a bluff could be disastrous – if the opponent does follow through and file the formal opposition, and you haven’t withdrawn or amended your application, you could then become liable for a contribution toward their legal costs. This is usually between £250 and £750.

Fees and litigation: The reality of the “loser pays” rule

One of the biggest concerns for any business owner is the potential cost of a legal dispute. At Tozers, we advocate for disputes to be settled, not fought, focusing on key principles of cost management:

1. Contribution, not compensation: In the IPO Tribunal, costs are generally awarded on a scale rather than full reimbursement. This provides transparency, but also means a winner is almost always out of pocket.
2. The withdrawal window: If you choose to withdraw your application before a formal opposition is filed, you are typically protected from paying the opponent’s legal costs. Once that opposition is submitted, your liability for costs begins.
3. Project management approach: Unlike many firms, we treat litigation as a project to be managed. This means using strategic oversight and clear timelines to minimise uncertainty.
4. Focus on early settlement: Very few cases actually reach a courtroom. Modern litigation is designed to promote early resolution through co-existence agreements or negotiation, which are far more cost-effective than legal escalation through the IPO Tribunal.

Are IPO fees refundable?

No, IPO trade mark application fees cannot be refunded, even if you withdraw your application or you are unsuccessful in defending an opposition.

How can Tozers help?

Navigating the line between a tactical bluff and a serious legal threat requires an experienced eye. Our specialist Intellectual Property sub-team can help you assess the strength of the opponent’s “prior rights” and determine whether their trade mark rights are valid.

Comment

“In the world of trade mark law, this notice is a tactical 'warning shot' rather than a final verdict. Our specialist sub-team can navigate the path forward with clarity and confidence, and we can provide advice and strategy in stages, giving you reassurance and costs certainty.”

Jessica Whittick, IP Solicitor

Why instruct Tozers?

We pride ourselves on being more than just solicitors; we are your strategic partners. As a top firm for client satisfaction, we’ve built our reputation on listening first and talking second. We specialise in turning legalese into actionable business growth, ensuring you feel confident and informed at every step of your IP journey.

Find out more

If you are thinking about your options after receiving a notice of threatened opposition, you can speak to us today.

If you are interested in registering a trade mark and you are unsure if your trade mark would infringe on anybody else’s rights, or you already have a trade mark and you need help enforcing your rights, you can arrange to speak to our specialist lawyers in a preliminary, no obligation call today.

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