Registration and use

Ownership of marks

Who may apply for registration?

A legal or natural person may apply for or register a trademark. This includes one or more individuals, a company, or a partnership. Joint ownership of trademarks is acceptable.

Scope of trademark

What may and may not be protected and registered as a trademark?

The list of signs eligible for trademark protection is not exhaustive. In principle, any sign capable of being represented in the United Kingdom’s trademark register in a clear and precise manner that allows consumers to distinguish goods or services from those of another undertaking may be registered as a trademark.

Words and logos as well as their combinations are the most common types of trademarks. Some examples of non-conventional trademarks that have been accepted include colours, sounds, slogans, three-dimensional shapes, patterns and monograms. However, these unusual trademarks are often more difficult to register.

A mark that is descriptive or non-distinctive, or both, can only be registered if it has acquired a distinctive character as a result of its usage, which must be shown by submitting evidence in support of the application.

The signs excluded from legal protection are those that are deemed to be offensive, misleading, consist exclusively of the shape directly associated with the product itself, or those that are prohibited from being registered by national or international law (eg, state symbols and royal insignia).

Unregistered trademarks

Can trademark rights be established without registration?

Unregistered trademark rights are recognised in the United Kingdom by virtue of the common law tort of passing off. Passing-off rights are acquired by using a mark in the course of trade in the United Kingdom where that use has generated goodwill in the mark.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Famous brands are afforded protection by virtue of section 56 of the Trade Marks Act 1994, which implements article 6-bis of the Paris Convention and covers well-known trademarks. The owners of the marks do not have to conduct business or have any goodwill in the United Kingdom. The owners must meet the requirement of being either nationals of, being domiciled in, or having a real and effective industrial or commercial establishment in a Paris Convention member state.

Whilst there is no definition of a well-known mark, the World Intellectual Property Organization’s Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks 1999 provides guidance on the factors relevant to the assessment of well-known marks. The United Kingdom does not have a register of well-known marks. To enforce a well-known mark in the United Kingdom, it would be necessary to submit extensive evidence to establish that a mark is well-known.

The proprietor of a well-known trademark can restrain the use of a trademark that is wholly or has an essential part that is identical or similar to the well-known mark, in relation to identical or similar goods or services, where such use is likely to cause confusion.

The benefits of registration

What are the benefits of registration?

There are many benefits to registering a mark in the United Kingdom. A trademark registration confers upon its owner the right to prevent others from using an identical or confusingly similar mark for identical or similar goods to those covered by the registration. Owners of registered trademarks and applicants for registration can use their rights to oppose third-party applications for identical or similar marks. Owners of registered trademarks can sue third parties for infringement if an identical or similar mark is used without consent.

Although the United Kingdom does recognise unregistered rights under the common law tort of passing off, registered rights are generally easier and less costly to enforce than unregistered rights. To take action against third parties based on unregistered rights in a mark, it is necessary to prove these rights through evidence, whereas a trademark registration is presumed to be valid unless challenged.

Registered trademarks can also be recorded with customs in the United Kingdom, which allows customs authorities to seize counterfeit goods.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

To file a trademark application, no supporting documentation is required. The following information is needed to file an application:

  • the details and an image of the mark;
  • the full name, address and nationality details of the applicant (including, if appropriate, the state of incorporation of the applicant); and
  • a list of the goods or services that the applicant offers or intends to offer under the trademark.

 

A trademark must be capable of being represented in the trademark register in a manner that would enable the registrar to determine the clear and precise subject matter of the protection sought.

Electronic filing of trademark applications is available via an online form provided on the Intellectual Property Office (IPO) website.

It is possible to apply for a series of marks in the United Kingdom. The material particulars of the marks included in the same series must resemble each other and differ only in matters of a non-distinctive character that do not substantially affect the identity of the trademark. A series application can include up to six variants of the mark.

Trademark availability searches are not compulsory but are usually recommended to determine and assess the risk of objection to the use or registration of the mark, on the basis of a third-party application or registration.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The official government filing fee for a trademark application in one class is £200 or £170 if filed electronically. There is an additional official fee of £50 for each extra class. For a series of marks, an additional official fee of £50 for each mark over two is also payable. Additional professional charges apply when applications are handled by a professional representative, the prices of which are likely to start at approximately a couple of hundred pounds, increasing depending on whether registrability, availability and specification advice is requested.  

The trademark registration procedure is relatively swift, with it being possible to secure a registration in four to six months if no objection by the IPO is raised and no third-party oppositions are encountered. If objections or oppositions are encountered, the cost and time taken to obtain a registration may significantly increase, depending on the nature of the objection or opposition.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The United Kingdom follows the Nice Classification. Applicants are required to specify exactly which goods or services in a particular class should be covered. Multi-class applications are permitted.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

First, the IPO issues an official filing receipt when the application is filed, which provides that the application contains the minimum information required and then the application is examined. At this stage, the examiner considers whether the application meets the registrability criteria. The examination of an application usually takes place within one to two months of the filing of the application.

A search for earlier applications or registrations for identical or confusingly similar trademarks is then conducted. If relevant earlier rights are revealed, they are included in the examination report. The IPO will not refuse an application on the basis of earlier rights but will notify the owners of the earlier rights revealed by the search of the filing of a potentially conflicting application. It is up to the earlier trademark owners to oppose the application once it is published for opposition purposes.

If an objection is raised or earlier rights are identified by the examiner, an examination report will be issued. Applicants are given two months to respond to examination reports to rectify deficiencies or to argue against objections, or both. If the only issue raised in the examination report relates to earlier rights identified in the search, the IPO will set a deadline for the applicant to respond if it wants to do so. If the applicant chooses not to respond, the application will go forward to publication and the IPO will write to the owners of earlier UK rights identified in the search to notify them of the application. It is sometimes possible to persuade the IPO not to notify earlier rights holders.

If no objection is raised or any objections have been resolved, the application is then published for opposition purposes. The opposition period is two months. Potential opponents can extend this period by one further month by filing a notice of threatened opposition at the IPO.

Finally, absent any opposition, a registration would usually be issued within one month of the close of the opposition period.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

The applicant or a representative must confirm that the applicant either uses, or has a genuine intention to use, the mark in relation to the goods and services specified in the application. No evidence is required as part of the application or registration process.

A registration will become vulnerable to revocation on the grounds of non-use if the trademark has not been used in the five years since the trademark was registered or for any uninterrupted period of five years without any proper reasons for non-use.

If the trademark has been used on some but not all of the goods and services covered by the registration, then the registration will be vulnerable to partial revocation on the grounds of non-use in relation to the goods and services on which it has not been used.

No protection is provided to marks registered in other jurisdictions unless a mark is either in use in the United Kingdom or qualifies for protection as a well-known mark by virtue of the Paris Convention.

Applicants may claim priority for UK applications from earlier foreign applications or registrations within six months of the first filing date in accordance with the Paris Convention.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The trademark registration symbol ® must only be used once a trademark is officially registered. It is a criminal offence to use the ® for a mark that is not officially registered. The use of the ™ symbol is not restricted, and can be used for unregistered and registered trademarks.

Appealing a denied application

Is there an appeal process if the application is denied?

Decisions made by the IPO can be appealed to the Appointed Person or to the High Court. Appointed Persons are senior lawyers who are experts in IP law. An appeal to the Appointed Person offers a relatively high-quality and low-cost route for an appeal. However, the decision of the Appointed Person is final and no further appeals are possible. In contrast, it is possible for a decision from a High Court appeal to be appealed further. An appeal to the High Court is more expensive but involves more of an in-depth review and can be preferable in certain cases.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

All UK trademark applications accepted by the IPO are published for opposition purposes. There is a two-month period following publication when third parties can file oppositions. This period may be extended by one month by request. No further extensions are available.

Possible grounds for opposition include:

  • absolute grounds, when:
    • the mark is not inherently registerable as it is descriptive, non-distinctive, deceptive, generic, contrary to public policy or morality, or a specially protected emblem; or
    • the trademark application is made in bad faith; or
  • relative grounds, when:
    • there is a likelihood of confusion with earlier trademark applications or registrations;
    • it is taking unfair advantage of, or being detrimental to, the distinctive character or the reputation of an earlier trademark application or registration;
    • there is conflict with earlier unregistered rights (eg, passing off); or
    • there is conflict with earlier design rights or copyright.

 

Anyone can oppose an application on absolute grounds. This includes the owners of brands registered in other jurisdictions filing an opposition on the basis of bad faith; however, the outcome will depend on the factual circumstances of each individual case. Only owners of earlier rights may oppose on the basis of relative grounds.

Following the receipt of an opposition, applicants have an opportunity to file a defence to the opposition or to request a cooling-off period designed to allow the parties to negotiate. If no defence is filed, the opposition automatically succeeds. If the applicant does file a defence, the adversarial part of the opposition proceedings commences where the parties can exchange arguments and evidence, and request an oral hearing of the matter.

 

Post-registration

A third party may challenge a registered trademark by filing an invalidity application based on absolute or relative grounds. If a registration is declared invalid, it will be removed from the official register as if it had never been registered.

Third parties may also apply for revocation of a registration either for reasons of non-use or on the basis that the trademark has become generic or is likely to mislead the public.

 

Costs

If an opposition is based solely on a likelihood of confusion with an application or registration for an identical or similar mark, the official fee is £100. For all other cases, the official fee is £200. Additional fees will arise if a professional representative gets involved, which will depend on the complexity of the matter.

The professional fees incurred are likely to range from several hundred pounds for the initial filing of an opposition or invalidity action to several thousand pounds, depending on what is required to make the case. If the proceedings involve the compilation, filing or review of evidence, then costs are likely to be in the thousands of pounds. If the parties choose to be represented at a hearing before the IPO rather than complete the proceedings on the basis of written submissions, costs are likely to increase. A costs award is granted against the losing party. Unless exceptional circumstances apply, the costs award will follow the scale of costs published on the IPO’s website. The scale of costs is modest and unlikely to cover the actual professional fees incurred in an opposition.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

UK trademark registrations are valid for 10 years and must be renewed every 10 years. They can be renewed indefinitely. The renewal date is calculated from the date of application and official fees are payable upon each renewal. A trademark registration can be renewed up to six months before its expiry date and up to six months afterwards. Trademark owners are not required to submit evidence of use of the trademark on renewal.

Surrender

What is the procedure for surrendering a trademark registration?

A trademark owner can surrender a registered trademark entirely or in part (ie, for all or only some goods or services). When a notice to surrender a registered trademark is filed, it must be accompanied by a declaration signed by an authorised person that every party listed as having a registered interest in the trademark has either been notified three months before the notice or has expressly consented to surrender the registration. Otherwise, it must be declared that no other party has a registered interest in the mark.

Related IP rights

Can trademarks be protected under other IP rights?

Artistic or design elements included in a trademark (eg, a logo) may be protected under copyright law, provided that they qualify for copyright protection. Copyright arises at the time of creation of a work that qualifies for protection. In other words, copyright protection arises automatically and it is not necessary to apply for it. The United Kingdom does not have a register for copyrighted works. Copyright allows the copyright owner to prevent others from:

  • copying the work;
  • distributing copies of the work;
  • renting or lending copies of the work;
  • performing, showing or playing the work in public;
  • making an adaptation of the work; and
  • putting the work on the internet.

 

Registered and unregistered design rights are also available in the United Kingdom. Design rights are relevant to appearance, physical shape and configuration (or how different parts of a design are arranged together). Some design rights can also cover surface decoration. Although trademarks containing graphic elements may be protected as designs, the protection obtained differs in scope from a trademark registration.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The rights and remedies available to trademark holders under the Trade Marks Act 1994 and passing-off rights also apply for infringement that takes place online.

Nominet, which is the .uk, .cymru and .wales domain registry, offers a domain name dispute resolution service (DRS) that rights holders can use to object to domain names that are identical or similar to the mark over which they have rights, and that have been used in a manner that takes unfair advantage of, or is unfairly detrimental to, those rights. To use the DRS, rights holders must submit a complaint along with evidence and pay a fee. The complaint procedure will then enter a mediation phase to try to settle the dispute between the complainant and respondent. When this is not possible, an independent expert will decide the case and, if appropriate, cancel the domain name or transfer it to the complainant.