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Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

A person who is the first to file a trademark at the UK Intellectual Property Office (UKIPO) is deemed to be the registered owner. However, the existence of an earlier trademark – which includes rights in earlier unregistered trademarks – provides grounds for the refusal of a trademark registration.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

The common law tort of passing off.

How are rights in unregistered marks established?

Passing off protects a business conducted by reference to a mark or ‘get up’. The owner must therefore show goodwill in a business under the mark.

Goodwill is more than just mere reputation, it has been stated to be “the attractive force which brings in custom” and is evidenced by actual trade and customers in the jurisdiction. Business conducted overseas under the mark with no UK customers will not generate goodwill, even if the mark is known in the UK. 

Are any special rights and protections afforded to owners of well-known and famous marks?

Section 56 of the Trademarks Act 1994 gives effect to Article 6bis of the Paris Convention. Protection is provided to the owner of a well-known mark, no matter whether that person carries on business or has any goodwill in the United Kingdom. This is in contrast to the requirements for establishing passing off where goodwill by way of actual customers in the United Kingdom, is a fundamental requirement.

To constitute a well-known mark, the mark must be well known in the United Kingdom as being the mark of a person who is a national of a Paris Convention country (the Paris Convention is the 1883 convention and any revisions or amendments to it and all members of the Agreement on Trade-Related Aspects of Intellectual Property Rights are included).

The owner of a well-known mark can restrain the use in the United Kingdom of a trademark, which – or the essential part of which – is identical or similar to its mark in relation to identical or similar goods or services, where the use is likely to cause confusion.

Unlike passing off, there is no requirement that the use of the mark complained of has damaged or is likely to damage the owner of the well-known mark. The owner of the well-known mark is only able to seek injunctive relief for the mark’s infringement; it is not entitled to claim damages or an account of profits.

To what extent are foreign trademark registrations recognised in your jurisdiction?

Trademarks are territorial rights. Therefore, a foreign national right (eg, a US trademark registration) has no legal effect in the United Kingdom, unless it constitutes a well-known mark.

EU trademarks have effect in each of the 28 member states of the European Union. The arrangements concerning the United Kingdom’s exit from the European Union are still being negotiated, but it is clear that once the United Kingdom leaves, an EU trademark will no longer have effect in the United Kingdom. It is assumed that there will be transitional arrangements to allow existing EU trademarks to be reproduced on the UK register as UK marks post-Brexit.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

The owner of a registered trademark has exclusive rights to the trademark, which are infringed by the use of the trademark in the United Kingdom without its consent according to Section 9(1) of the Trademarks Act 1994.

The owner of a registered trademark may therefore prevent others from using its mark in the course of trade in the United Kingdom, in any way that is contrary to its exclusive rights (ie, in any way that affects one of the relevant functions of the mark).

The circumstances in which a trademark may be infringed are set out in Section 10(1) to 10(3) of the Trademarks Act. These circumstances include:

  • where the marks are identical and the goods and services are identical;
  • because the marks are identical and the goods and services are similar or the marks are similar, and the goods and services are either identical or similar, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark; and
  • where the earlier mark has a reputation in the United Kingdom and the use of an identical or similar mark in respect of any goods or services whether identical, similar or dissimilar takes unfair advantage of, or is detrimental to the distinctive character or repute of the earlier mark without due cause.

Infringing acts include:

  • affixing the sign to goods or packaging;
  • offering, exposing for sale, putting on the market or stocking goods for these purposes under the sign, or offering or supplying services under the sign;
  • importing or exporting goods under the sign;
  • using the sign on business papers or in advertising; and
  • using the sign in comparative advertising contrary to the relevant directive.

Who may register trademarks?

Any natural person or legal person capable of owning property in its own name may apply to register a trademark (eg, a registered company, limited liability partnership, partnership, trust or club).

If the trademark applicant is not based in the United Kingdom, the European Economic Area or the Channel Islands, it must appoint a representative to act on its behalf.

What marks are registrable (including any non-traditional marks)?

To be validly registered, a trademark must consist of a ‘sign’, which can be represented graphically and is capable of distinguishing the goods and services of one party from those of another.

Both traditional (word and logo marks) and non-traditional trademarks (colours, smells, sounds, three-dimensional shape marks, movement marks or holograms) can be registered. However, it is often more difficult for non-traditional marks to satisfy registration requirements.

Can a mark acquire distinctiveness through use?

Yes, distinctiveness must be acquired across the full range of goods or services for which registration is sought – or a registration is sought to be maintained. The mark must acquire distinctiveness throughout a significant part of the United Kingdom.

Evidence to show acquired distinctiveness includes:

  • the market share held by the mark;
  • the geographic extent of use;
  • the amount invested in promoting and advertising the mark; and
  • how longstanding the use of the mark has been.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

A trademark may be refused registration on either or both absolute and relative grounds. However, the UKIPO will not refuse marks ex officio on relative grounds – refusal on relative grounds requires a third-party opposition or cancellation action.

The absolute grounds for refusal of registration are:

  • the sign does not satisfy the requirements of registration;
  • the mark is devoid of distinctive character;
  • the mark is descriptive – (ie, it designates the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of goods or services); and
  • the mark has become generic to the trade.

The last three of the above absolute grounds may be overcome by a finding that the mark has in fact acquired distinctiveness through use.

There are additional absolute grounds of refusal that are applicable to shape marks only. These provide that an applicant cannot register a mark that consists exclusively of the shape which:

  • results from the nature of the goods themselves;
  • is necessary to obtain a technical result; and
  • gives substantial value to the goods.

A trademark will also be refused on absolute grounds if, among other things:

  • it is contrary to public policy or accepted principles of morality;
  • it is of such a nature as to deceive the public;
  • its use is prohibited in the United Kingdom by any enactment, rule or provision of law; and
  • the mark consists of a specially protected emblem (eg, the royal crown or coat of arms).

It is a requirement of registration that the applicant has an intention to use the mark. The absence of an intention to use may amount to bad faith.

The relative grounds for refusal of registration mirror the provisions dealing with trademark infringement. Therefore, they enable an owner of an earlier mark to prevent the registration of a sign when use of that sign would impinge upon the earlier owner’s rights.

The definition of what constitutes an ‘earlier trademark’ includes:

  • an earlier UK or EU registered trademark or application;
  • an earlier international registration designating the United Kingdom or the European Union; and
  • a well-known mark protected under the Paris Convention.

Earlier rights in passing off or copyright may also be relied on.

Are collective and certification marks registrable? If so, under what conditions?

Marks that designate the geographical origin or quality of goods can be registered in the United Kingdom as certification or collective marks. Certification marks indicate that the goods or services sold under them meet certain standards. Collective marks distinguish the goods or services of a group of companies or members of an association.

The examination of certification and collective marks consists of two distinct phases. First, the initial examination of the application itself, which includes an assessment of the mark’s inherent acceptability under both absolute and relative grounds.

Second, there is an examination of the regulations that govern the use of the certification or collective mark. These regulations need to be clear and accessible so that anyone intending to make use of the mark can easily access the relevant information.

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