Trade and Service Marks

– Trade Marks Ordinance 2007, in force since October 8, 2007, as amended.
– Trade Marks (Amendment) Rules 2011, in force since July 29, 2011.

Note: previous two-tier system of local registrations and re-registration of U.K. marks is abolished. A new schedule of official fees came into force on July 29, 2011 in which annual maintenance fees are payable in January every year.

Membership in International Conventions

– None.

Filing, Examination

Applicant: the first user of a mark; anyone claiming to be the proprietor of the mark. 

Definition: any sign, name of a company or individual, pictures, invented words, if they are distinctive and if they have no direct reference to the character or quality of the goods. 

Service marks: registrable.

Certification marks: registrable.

Collective marks: registrable.

Priorities: Convention priority if the application is made within six months of the basic application.

Classification: international. One application is required for each class of goods.

Filing requirements for an application (to be sent to resident agent):
1. Authorization (one authorization for each class of goods), simply signed;
2. 5 prints of the mark;
3. Certified copy of basic application, if priority is claimed, with verified English translation (if applicable).

Examination: the Registrar carries out a substantive examination.

Amendment of application: an application may be amended, at the request of the applicant, only by correcting (a) the name and address of the applicant; (b) errors of wording or of copying; or (c) obvious mistakes, and only where the correction does not substantially affect the identity of the trademark or extend the goods or services covered by the application. 

Publication: accepted applications are published in the Gazette. 

Opposition: possible within one month of date of publication.

Protection

Beginning of protection: from the filing date. 

Duration – extension: ten years from the filing date; can be renewed indefinitely for further periods of ten years.

Obligation to use: any aggrieved person may apply to the court for the removal of a mark from the Register in the case of non-use for a period of five years or more.

Marking of registered goods: not compulsory, but recommended. 

Renewal: every ten years.

Term of grace for renewal: six months.

Maintenance fees: annual maintenance fees payable on January 1st each year in respect of all trademarks irrespective of whether or not they are granted. Failure to pay the annual maintenance fee before February 1st each year causes the trademark rights to be suspended until the fee is paid.

Modification of the mark: the Registrar may allow the alteration of a registered trademark where the mark includes the proprietor’s name or address and does not substantially affect the identity of the mark. 

Changes in the list of goods/service: only in so far that goods/services or any classes of goods/services can be struck from those for which the trademark is registered. 

Assignments: possible. 

Licenses: a person other than the proprietor of a trademark may be registered as a licensee thereof in respect of all or any of the goods/services in respect of which it is registered. The use of a trademark by a licensee thereof in relation to goods/services with which he is connected in the course of trade and in respect of which the trademark is registered is deemed as “permitted use” and accrues to the trademark owner. A license is not effective unless it is in writing and signed by or on behalf of the grantor.

Cancellation: any person may apply to the court for the cancellation of a trademark.