A trademark opposition is a formal objection to someone else's trademark application, made before it reaches the register. It's often the simplest point to stop a clash, and it's also where a new brand owner often first finds out their name is in trouble. These trademark opposition cases show how the registry and the courts decide those fights, whether you want to oppose a trademark or keep your own application alive.
What is a trademark opposition?
In simple terms, it runs like this:
- An application is published. Anyone with an earlier right who thinks the new mark clashes with theirs can object.
- The opponent sets out its grounds. The common ones are an earlier mark that's similar enough to cause confusion, an earlier mark with a reputation, an unregistered name protected by passing off, an application made in bad faith, or a mark that simply describes the goods.
- A hearing officer decides. Either side can appeal, and several of the cases below are appeals from that first decision.
The test for confusion is the same one used in infringement claims: how alike the marks look, sound and mean, how close the goods or services are, and how distinctive the earlier mark is, all through the eyes of the average consumer.
How close is too close at the registry?
esure v Direct Line
esure applied to register a logo of an object on wheels, and was opposed on the strength of a similar earlier logo. The Court of Appeal held that the hearing officer didn't need expert or survey evidence to find that consumers would be confused, and reinstated the opposition. A tribunal can usually decide confusion for itself, from the marks alone.
Summary coming soonAveda v Dabur
DABUR UVEDA had been allowed to register. Aveda appealed and won, because the hearing officer had misapplied the case law on when one part of a combined mark keeps its own role and causes confusion. Adding your own house name to a rival's mark doesn't automatically avoid confusion.
Summary coming soonWhyte and Mackay v Origin Wine
The registry had refused JURA ORIGIN for whisky because of earlier ORIGIN marks for wine. The High Court overturned that refusal and found no likelihood of confusion. A shared descriptive word usually won't block a combined name if it's absorbed into a different overall meaning.
Read our summaryNicoventures v The London Vape Company
The High Court overturned a UKIPO opposition decision, holding that two vaping brand logos sharing only the descriptive words VAPE and CO were not confusingly similar. Marks built from common industry words usually get a narrower scope of protection.
Read our summaryExtreme Networks v Extreme E
A hearing officer found that organising shows, motorsport events and award ceremonies was similar to booking seats for shows. A first appeal overturned that, but the Court of Appeal restored the finding, and with it the opposition, holding that it ought not to have been disturbed. Appeals against a hearing officer's judgment call on similarity are hard to win.
Read our summaryCan a well-known name block a newcomer?
Du Pont v S.T. Dupont
DU PONT could be registered for clothing because it had become distinctive through use on fabrics. S.T. DUPONT's competing application was refused, because it would pass off its goods as connected with DU PONT. A name's reputation in one product area can carry over into a closely related one.
Summary coming soonWHG v 32Red
The Court of Appeal confirmed that an online casino called 32Vegas infringed rival operator 32Red's trademarks, including its bare "32" number mark. A short number can be a valid trademark, and it can still be protected when it appears inside a longer name.
Summary coming soonHasbro v 123 Nahrmittel
A rival branded its edible dough as THE EDIBLE PLAY DOUGH. That infringed Hasbro's PLAY-DOH trademarks, even though there was evidence that "play dough" is sometimes used to describe homemade modelling dough. Describing your product with a rival's famous name can still infringe, even if the words have an everyday meaning too.
Summary coming soonDescriptive words and place names
Apple v Arcadia Trading
Apple lost its appeal to register IWATCH because the court found it merely described a watch-like device connected to the internet. Its use of iPhone, iPad and iPod didn't give IWATCH distinctiveness of its own. Fame in one name in a family of brands doesn't automatically pass to a new, descriptive-sounding one.
Read our summaryFage v Chobani
FAGE could stop Chobani calling its yoghurt "Greek yoghurt", because UK shoppers took the phrase to mean yoghurt actually made in Greece, and Chobani's wasn't. A descriptive phrase can belong to a group of traders when customers genuinely rely on what it tells them.
Read our summaryTorres v Mezzacorona
The Court of Appeal held that an EU wine labelling regulation didn't stop the registration of a brand name that resembled a place name, because there was no real risk of misleading consumers. A name that looks like a place isn't automatically blocked if nobody is likely to be misled.
Summary coming soonBad faith and coexistence agreements
The CHINA WHITE case
An applicant filed to register CHINA WHITE knowing a nightclub already served a cocktail of that name, and relied on a third party's unchecked claim to own it. The Court of Appeal confirmed that was a bad faith application. Knowing someone else already uses a name, and not checking a claim to own it, can itself be bad faith.
Summary coming soonOmega Engineering v Omega
Omega Engineering's amended application for multipurpose temperature and time instruments was held valid. The watch maker Omega was found to have breached a long-standing coexistence agreement by registering overlapping marks. Coexistence agreements are read strictly on their wording, including whether they cover goods, services or both.
Summary coming soonWhat happens after the opposition?
Special Effects v L'Oreal
A company that had opposed a trademark application and lost was later sued for infringement. The Court of Appeal ruled it could raise the same invalidity and passing off arguments again, because registry opposition decisions aren't final in that way. An opposition result doesn't permanently close the argument.
Summary coming soonSkyscape v Sky
A cloud services company called Skyscape asked the court to declare that it didn't infringe Sky's SKY trademarks. The court found it hadn't proved that and dismissed the claim. If you ask a court to clear your name in advance, the burden of proving it is on you.
Read our summaryWhat I’d take from these trademark opposition cases
- 1What I'd take from this is that the hearing officer's view carries real weight. Appeals on how similar two marks or services are rarely succeed, so the first hearing is the one to prepare for.
- 2Descriptive and common industry words give you a narrow monopoly, whichever side you're on. They make a weak base for an opposition and a weak mark to register.
- 3Adding your own house name to a rival's mark isn't a reliable fix.
- 4Bad faith is a live ground. Filing a name you know someone else uses is a risk, even if a third party says it's theirs.
- 5Losing an opposition isn't always the end, but winning one isn't always the end either. Keep watching the register after the decision.
If a new application clashes with your name or logo, we can oppose a trademark for you, and if yours is the one being opposed, we'll help you defend it. Trademark monitoring tells you when a clashing application is published, so you don't miss the window. Before you file, a trademark search shows what's already on the register, so you can register a trademark with fewer surprises.
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This page is for information purposes only and does not constitute trademark advice or guidance. Case summaries are drawn from published UK judgments; summaries drafted with AI assistance and checked by The Trademark Helpline (how we write these). Last reviewed 30 October 2026.
