Trade and Service Marks

– Trade Marks Act 1994, as amended.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 24, 1965.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 26, 1970.
– Nice Agreement Concerning the International Classification of Goods and Services, Geneva Act.
– Madrid Agreement for the Repression of False and Deceptive Indications of Source on Goods, Stockholm Act.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Trademark Law Treaty, since August 1, 1996.
– Singapore Treaty on the Law of Trademarks, since June 21, 2012.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since September 11, 2013.

Territories Covered

Territories covered by a United Kingdom Trade Mark Registration: a United Kingdom trademark registration gives protection in Great Britain, Northern Ireland and the Isle of Man. However, in certain other countries, it is necessary to have a United Kingdom Trade Mark Registration before an application can be made to register a trademark locally. In addition, some countries may allow extension of the United Kingdom (U.K.) protection, and accept it as protected in that country after completing certain local formalities. These countries are as follows: Anguilla, Bahamas, Bermuda, British Indian Ocean Territory, Cayman Islands, Cyprus, Falkland Islands, Fiji, Gibraltar, Grenada, Guernsey, Guyana, Jersey, Kiribati, Montserrat, Saint Helena and dependencies, Saint Kitts and Nevis, Saint Lucia, Samoa, Sierra Leone, Solomon Islands, United Republic of Tanzania (but no re-registration in Tanganyika or Zanzibar), Turks and Caicos Islands and Tuvalu.

A list of the countries can be viewed at this link: www.gov.uk/government/publications/extension-of-uk-intellectual-property-rights-abroad.

Since 1996, United Kingdom trademark registrations extend automatically to the Falkland Islands without re-registration but the right expires with the United Kingdom trademark. In Gibraltar, U.K. registration can be extended as an alternative to local registration.

The coverage of a U.K. designation through the Madrid Protocol with respect to the British Overseas Territories and the British Crown Dependencies is also available through WIPO Information Notice No. 38/2015 at: www.wipo.int/edocs/madrdocs/en/2015/madrid_2015_38.pdf

The authority in charge of the U.K. Trade Marks Register is the U.K. Intellectual Property Office (UKIPO).

Filing

Applicant: any natural person or legal entity capable of owning property in its own name, such as a company or other corporate body, may apply to register a trademark.

Foreigners and nationals not living in the United Kingdom, including foreign companies: may apply for registration on the same terms as a British applicant, but must give an address for service in the United Kingdom, Gibraltar or the Channel Islands.

Types of registration: registration of trade and service marks, registration of certification trademarks/service marks and registration of collective trademarks/service marks. Series marks may be registered. Registration gives full rights of protection.

Service marks: registrable.

Novelty: a trademark applied for must not conflict with a trademark already registered or pending, or with a “well-known” mark, which may or may not be registered in the United Kingdom.

Exceptions to protection: any sign that is not capable of being represented in the Register in a manner which enables the Registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor; not capable of distinguishing goods of one undertaking from those of another; marks devoid of a distinctive character; marks consisting exclusively of signs or indicators designating kind, quantity, quality, intended purpose, value, geographic origin, time of production of goods or of rendering of services, or other characteristics; signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; words or representations contrary to good morals, not in accordance with fact or likely to deceive, representation of any member of the royal family, representation of royal arms, crests, emblems, etc., and representations of emblems, etc. of international organizations and national emblems, etc. of Convention countries. If distinctiveness can be proved by substantial evidence, normally non-registrable words may be registered, but must normally have been used for at least five years in the United Kingdom, substantial evidence of use being required with declarations in support from the trade if necessary.

National flags: may be registrable but authorization of the competent authority may be required.

Names or portraits: may be registrable if they are distinctive of the goods or services but consent may be required if the person named or portrayed is alive or recently deceased. Non-trading associations may register a certification mark to denote agreed standards of quality. Associations may register a collective mark to distinguish the goods or services of its members from those of other undertakings. Proprietors of very well-known trademarks can prevent use or registration by others of their trademarks for goods/services with which they are not normally associated themselves, in order to prevent others from exploiting the reputation of their trademarks.

Classification: International Classification.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney not required;
2. If mark is other than a word in block lettering, a representation of the mark (preferably size 8 x 8 cm) is also required.

Electronic filing: available.

Examination Procedure

Amendment of application: only errors in name and address of applicant, errors of wording or of copying and obvious mistakes appearing in the application may be corrected on application to the UKIPO, and only where the correction does not substantially affect the identity of the mark. A correction, which extends the scope of the specification of goods, is not acceptable, and correction of the mark as applied for is not permitted.

Examination: all applications are subjected to an official search for conflicting earlier trademarks and examination as to registrability. As from October 1, 2007, the UKIPO will not automatically prevent registration of a trademark that is identical or similar to an earlier mark on the Register. The applicant will merely be informed of those marks that UKIPO considers to be similar. If the citations are not overcome and if the applicant elects to proceed, the owners of the earlier applications or registrations may be notified of the application when it is published. Owners of U.K. applications or registrations or International registrations designating the U.K. will automatically be notified of similar applications. (Note: the “opt-in scheme” for EUTM owners has been cancelled). Owners of EU applications or registrations or International registrations designating the EU will not automatically be notified of similar applications by the UKIPO.

Disclaimers: available.

A letter of consent: must be accepted by the UKIPO in order to overcome an objection based on an earlier trademark. The letter should contain at the least the following: be on the company headed paper of the owner of the earlier mark; state the application number of the mark for which consent is given; agree to the registration of the mark, not just its use; be signed by a responsible person in the company and state that person's name and position in the company.

Opposition: after the trademark application has been accepted by the UKIPO it is advertised in the Official Journal and is open to opposition for two months. A further one-month extension of the two-month period may be obtained and oppositions founded on possible similarity of marks or improper registration must be filed before the end of the opposition period. Such oppositions should state the grounds on which the objection is raised and the relevant sections of the Act. It is now possible to file a fast-track opposition on relative grounds only, with a reduced official fee.

Disputes about ownership: ownership resides in the first registrant of a trademark in the United Kingdom. (Note: the first registrant of a trademark is the owner. The UKIPO previously allowed registration of the same or similar marks where there was honest and concurrent use, without confusion, for a period of around five years. However, the UKIPO no longer accepts honest concurrent use applications). 

Appeal: provision is made for appeal against any decision of the UKIPO refusing an application.

Urgent registration: provision is made for filing with “fast-track” examination of trademarks. Fast-track examination incurs an additional fee, but this is refunded if the UKIPO does not examine the trademark application within ten business days. (Note: the UKIPO is currently taking around twenty days to examine an application and so the fast-track service is currently unavailable). It is, however, possible to file a “Right Start” application, generally for use with borderline trademarks. With a Right Start application one initially pays half the total government fees. The UKIPO then examines the application to assess whether it meets the requirements for registration, and issues an examination report. If a decision is made to continue with the application the balance of the government fees (other 50%) will need to be paid. 

Provisional registration: no provision is made for filing of provisional trademark applications.

Publication of trademark: is effected by advertisement in the Official Trade Marks Journal following acceptance of the application.

Correction of registration: changes such as changes of name of the proprietor or his address can be made after registration (no documents required for the recordal). Amendment of the specification of goods/services can also be made following registration providing this does not in any way extend the scope of the specification of goods/services as originally applied for. No application may be filed for modification of the trademark as registered, except when the mark includes the proprietor’s name and address and the alteration is limited to alteration of the name and address and does not substantially alter the main feature of the mark.

Granting

Delivery of document: issuance of the certificate of registration may take anything from less than one year to two years or even longer depending on the complexity of the application. Generally it is presently taking around six to nine months to register a U.K. trademark. The certificate is issued in digital format.

Beginning of protection: a granted registration is effective as from the date of the application.

Kind of property: prior use confers limited prior rights; registration is prima facie evidence of the property.

Duration: ten years.

Renewals: before expiry of the ten-year period, application may be made for renewal for a further period of ten years and the mark may thereafter be renewed indefinitely every ten years. Renewal fees are payable. All renewal terms are calculated from the original date of filing of the application, the first renewal being payable before the period ending ten years from the date of application, and subsequent renewals at ten-yearly intervals. Renewal fees are not accepted by the UKIPO more than six months prior to the due date.

Term of grace for renewal: application for renewal may be made within six months after the expiry of the normal term on payment of an additional fee. Restoration is possible up to one year after the normal renewal due date.

Compulsory character of registration: registration of trademarks in the United Kingdom is not compulsory.

User rights: the rights derived from a trademark registration are vested solely in the Registered Proprietor subject to maintenance of the rights of prior users of the same or a confusingly similar trademark.

Obligation to use: any trademark not used for five consecutive years from the date registration is granted may be revoked on application by a third party.

Marking of registered goods: not compulsory but usual.

Text of marking: “Registered” or “Regd” with or without the words “Trade Mark” and with or without the trademark number. It is not essential actually to make markings or label the goods with a “Registered Trade Mark” providing it is associated with the goods by way of advertisement catalogues, etc.

Licenses: provision is made for the entry on the official Register of trademarks of traders or manufacturers permitted by the proprietor of a registered trademark to use the trademark. If a proprietor permits use of a trademark by anyone else without adequate control over their use, he runs the risk of losing exclusive rights to the mark.

Assignment: can be registered with or without goodwill of the business. If assignment is not registered within six months of acquisition then the assignee loses any right to damages or an account of profits in respect of any infringement which occurs after the date of the assignment and before the assignment is registered; a trademark can be assigned for only a portion of the goods/services.

Modification of Protection after Granting

Rights of prior user: registration of a trademark will not entitle the registered proprietor to restrain or interfere with the continued use by any person of a trademark identical with or confusingly similar to the registered trademark if that person has continually used the mark from a date anterior to the date of application for registration or the date of first use by the registered proprietor, whichever is the earlier.

Opposition to registered marks: may be raised by way of an application for invalidation or revocation based on such grounds as improper registration, improper use of the mark, non-use of the mark.

Compulsory licenses: there is no provision for compulsory licenses under the Trade Marks Act.

Validation of invalidated marks: a registration which is vulnerable to revocation because the trademark has not been used for a period of five years or more may be saved by the proprietor recommencing genuine use of the trademark before any application for revocation is made by a third party, but a trademark which has been revoked or invalidated would have to be re-registered if circumstances allowed.

Provision for restoration: restoration is possible within one year after the renewal due date if there are valid reasons for failure to renew.

Registration of invalidated marks: under certain circumstances registrations which have become invalid may be re-registered, but such applications will be subject to the rights of third parties.

Infringement: action against infringement may be taken in relation to a trademark against any person unlawfully using the trademark or a similar mark in relation to the same goods or services, or similar goods or services; or in relation to dissimilar goods or services where the registered trademark has a reputation in the United Kingdom and the use, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark.

Penalties for infringement are injunction, damages and delivery up of infringing articles, literature, etc.