Trademark procedures and strategies: United Kingdom
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There are no special requirements for trademark ownership in the United Kingdom and any legal or natural persons capable of owning property in their own name can apply for and own a trademark.
Legal framework
The main law governing trademarks in the United Kingdom and the Isle of Man is the Trademarks Act 1994. The act implements the EU Trademarks Directive (2008/95/EC) and makes provisions in connection with the EU Trademark Regulation (207/2009).
Other relevant acts include:
- the Copyright, etc and Trademarks (Offences and Enforcement) Act 2002 (Chapter 25);
- the Digital Economy Act 2010; and
- the Trade Descriptions Act 1968 (Chapter 29, as amended up to the Consumer Protection from Unfair Trading Regulations 2008).
The United Kingdom is a member of the World Intellectual Property Organisation and a signatory to a number of international treaties relating to trademarks, including:
- the Paris Convention for the Protection of Industrial Property;
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
- the Singapore Treaty on the Law of Trademarks;
- the Trademark Law Treaty;
- the Agreement on Trade-Related Aspects of Intellectual Property Rights;
- the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks; and
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
Unregistered marks
Unregistered trademarks can be protected in the United Kingdom through the common law tort of passing off. Passing off is often claimed in conjunction with claims of registered trademark infringement, as the concept can be more flexible than traditional trademark infringement claims. To succeed in a claim of passing off, the claimant must:
- establish goodwill or a reputation attached to its goods or services;
- demonstrate that a misrepresentation has been made by the defendant, leading the public to believe that the defendant’s goods originate from the claimant; and
- show that it has suffered damage or is likely to suffer damage as a result of the defendant’s actions.
Innocence is not a defence in a passing-off case, which can be established despite the defendant being unaware of the earlier mark.
The amount of use required for establishing protectable goodwill depends on a number of factors, including:
- the duration of use under the mark;
- the level of marketing or advertising, both before and after the commencement of trade; and
- how distinctive or descriptive the mark is.
For example, a short period of trading can be offset by extensive marketing and advertising before launching a product or service.
Goodwill must be local to the United Kingdom; merely having a reputation in the United Kingdom is not enough to succeed in an action for passing off.
In practice, bringing a case of passing off involves a heavy burden of proof for the claimant.
Registered marks
There are no special requirements for trademark ownership in the United Kingdom and any legal or natural persons capable of owning property in their own name can apply for and own a trademark.
Representation before the UK Intellectual Property Office (UKIPO) is not compulsory, but the provided correspondence address must be in the United Kingdom, another country in the European Economic Area or one of the Channel Islands. Where the applicant appoints a representative, there is no need for a power of attorney.
According to the Trademarks Act, a trademark may consist of any of the following, provided that they are capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of others:
- words;
- personal names;
- designs;
- letters;
- numerals;
- the shapes of goods or their packaging;
- moving images; or
- holograms.
This non-exhaustive list is further extended by European Court of Justice case law, which has held that visually non-perceptible signs (eg, sounds and smells) can also constitute a trademark. Collective and certification marks are also protected in the United Kingdom.
Trademarks that cannot be protected include signs that:
- are devoid of distinctive character;
- are descriptive of any characteristics of goods or services;
- have become customary in the current language or in the bona fide and established practices of the trade;
- consist exclusively of a shape which:
- results from the nature of the goods themselves;
- is necessary to obtain a technical result; or
- gives substantial value to the goods;
- are contrary to public policy or to accepted principles of morality;
- are of such a nature as to deceive the public;
- have been applied for in bad faith;
- consist of or contain the royal arms, a representation of the royal crown or any royal flags or a representation of any member of the royal family without due consent;
- consist of or contain the national flag of the United Kingdom or of England, Wales, Scotland, Northern Ireland or the Isle of Man, if use of the trademark would be misleading or grossly offensive; or
- consist of or contain Olympic symbols without due authorisation.
Procedures
Examination
Having checked that the application meets the formal requirements for filing, the UKIPO examines whether the goods and services applied for are classified correctly and whether the mark falls under any of the absolute grounds for refusal.
If the UKIPO raises any issues regarding classification or registrability of the mark, the applicant is granted two months to amend the application or comment on the issues raised.
The UKIPO also performs a search for similar earlier marks, but such search results do not constitute an objection to the application; the UKIPO merely notifies the earlier rights holder of publication of the application for a similar mark.
Opposition
Once a mark has been accepted, it is published for opposition purposes. An opposition can be filed up to two calendar months from publication; this can be extended to three months by filing a formal notice of threatened opposition.
It is advisable to contact the applicant in writing before filing an opposition, as no costs are normally awarded in a successful opposition if the opponent does not give the applicant a chance to withdraw its application before the opposition is filed.
Holders of earlier rights can rely on the following relative grounds in an opposition:
- double identity;
- likelihood of confusion (which includes the likelihood of association with the earlier trademark);
- where the earlier trademark has a reputation in the United Kingdom or the European Union and use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark;
- where an earlier unregistered trademark or other sign is used in the course of trade (ie, the law of passing off); and
- earlier copyright, design rights or registered designs.
An opposition by any third party can also be based on any of the absolute grounds for refusal (eg, the descriptive or generic nature of the mark).
The opposition procedure starts when a notice and grounds of opposition are filed and the respective fee is paid. The applicant is then allowed two months to file its notice of defence. If the applicant fails to file a notice of defence, the application is deemed to be abandoned in relation to the opposed goods and services.
The parties can agree to a cooling-off period, which must be requested before the deadline for the applicant’s notice of defence. The initial nine-month cooling-off period can be extended to a maximum period of 18 months.
Where an opposition is based on an earlier trademark which has been registered for five years or more at the date of publication of the opposed application, the applicant may put the opponent to proof of use of the earlier mark.
Cost awards in proceedings are capped and the UKIPO has discretion to determine the level of the award from a published scale of costs.
Registration
Where no opposition is filed, a mark usually proceeds to registration and a registration certificate is issued within four months of filing. Once registered, a trademark is valid for 10 years from the filing date and may be renewed for further 10-year periods.
Renewal
A trademark can be renewed during the six-month period before it expires, or up to six months after the expiration date on payment of an additional fee for late renewal.
Renewal can be requested in relation to all or only some of the goods and services covered.
Removal from register
Invalidation: Any interested party can apply to remove a trademark registration in its entirety or in relation to only some of the registered goods or services, on either absolute or relative grounds.
An application for invalidation can be made at any time after registration. However, a potential applicant loses entitlement to file an invalidation application where it has consented for a continuous period of five years to the use of a registered trademark in the United Kingdom, being aware of that use, unless the later trademark was registered in bad faith.
In case of a successful invalidation, the registration is deemed never to have been made.
Non-use revocation: A UK trademark registration may be revoked if it has not been put to genuine use in the United Kingdom within five years of registration, or if such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use.
Where a trademark registration is revoked to any extent, the rights of the rights holder are deemed to have ceased to that extent as from the date of the application for revocation, or an earlier date if the registrar or court is satisfied that the grounds for revocation existed at that date.
Other grounds for revocation include:
- where a mark has become the common name in the trade for a product or service for which it is registered as a consequence of acts or inactivity of the rights holder; or
- as a consequence of the mark’s use by the rights holder or with its consent in relation to the goods or services for which it is registered, where the mark is liable to mislead the public – particularly as to the nature, quality or geographical origin of those goods or services.
Enforcement
Civil procedure
Enforcement of trademark rights in the United Kingdom is predominately a civil matter. Both registered trademark and passing-off claims can be brought in the High Court (Chancery Division), as well as in the IP Enterprise Court. Judges in these courts tend to be IP specialists.
Claims at the IP Enterprise Court can be multi-track or small claims track; the track chosen has implications for the remedies available to the claimant.
Remedies include:
- interim injunctions (in combination with a cross-undertaking in damages);
- final injunctions;
- damages or account of profits;
- delivery up of infringing goods;
- removal of marks from infringing goods; and
- destruction of infringing goods.
Delay in making a claim may be fatal to an application for interim relief; it is generally accepted that delay of more than one month may weaken such a claim.
IP Enterprise Court: The small claims track at the IP Enterprise Court:
- is suitable for claims below £10,000;
- does not provide for the grant of interim remedies;
- is not suited to challenges to validity; and
- has limited scope for recovery of costs.
The multi-track:
- is suitable for claims of up to £500,000;
- provides for the recovery of legal costs of up to £50,000;
- is cheaper, speedier and more informal than High Court proceedings; and
- seldom lasts more than two days at trial stage.
A case management conference is used to manage the conduct of the case in order to bring the proceedings to a trial in a manner that is proportionate to:
- the nature of the dispute;
- the financial position of the parties;
- the degree of complexity of the case;
- the importance of the case; and
- the amount of money at stake.
High Court (Chancery Division): Proceedings before the Chancery Division of the High Court:
- are suitable for claims of more than £500,000;
- deal with complex issues not tackled by the IP Enterprise Court; and
- impose no limits on legal costs or damages that can be claimed.
All cases are actively managed by the master of the High Court, but a judge may be nominated to hear the case and deal with the case management where it is appropriate due to the size or complexity of the case or for other reasons. There is no jury; the judge hears cases on his or her own. Parties must disclose the documents that they seek to rely on in the case, including documents which adversely affect another party’s or the party’s own case or support another party’s case.
The Chancery Division can grant interim injunctions, including freezing injunctions, and search orders. The remedies that can be ordered by the court include:
- permanent injunctions;
- damages or account of profits;
- destruction or delivery up of infringing goods; and
- costs.
Groundless threats of trademark infringement are actionable by the defendant.
Criminal procedure
A variety of criminal offences are also listed in the Trademarks Act, including:
- applying to goods or their packaging a sign that is identical to or likely to be mistaken for a registered mark;
- dealing in such goods; and
- possessing articles that are capable of making copies of trademarks.
These criminal proceedings are usually brought by local weights and measures authorities, rather than the rights holder, and are used to tackle counterfeit goods.
Ownership changes and rights transfers
Documents to assign or license trademarks to third parties need not be notarised or legalised in the United Kingdom. Assignment documents and licences must be made in writing and signed on behalf of the assignor or grantor. The assignee’s signature is not required, but is generally recommended.
Trademarks can be partially licensed or assigned in relation to some, but not all of the goods or services for which the mark is registered, or in relation to the use of the mark in a particular manner or locality.
Where trademarks are jointly owned, one owner cannot assign or license the trademark without the consent of the other(s).
Although recording a transaction at the registry is not mandatory, until an application has been made to record a transaction on the register, the transaction is ineffective against a person acquiring a conflicting interest in or under the registered trademark in ignorance of it. To be effective, the transaction must be recorded at the registry within six months of the date of the transaction.
A licence must be recorded on the register in order for the licensee to assert statutory rights and remedies in relation to infringement. Once the licence has been recorded, the licensee (unless its licence states otherwise) is entitled to call on the owner of the registered trademark to commence infringement proceedings in respect of any matter which affects its interests. If the trademark owner refuses to do so or fails to do so within two months of being called on, the licensee may bring the proceedings in its own name as if it were the trademark owner. An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after grant of the licence as if the licence had been an assignment.
Where a trademark is used under licence, this use is sufficient to prevent revocation of that mark on the basis of non-use.
Related rights
There is a degree of overlap in the protection afforded to trademarks that have artistic merit. All artistic works are protected by copyright in the United Kingdom, without the need for registration, and provide protection until the end of the period of 70 years from the end of the calendar year in which the author dies.
In addition, product get-up and designs can be protected through UK design right and registered design protection where the design is new and has individual character. Design right automatically protects a design for 10 years after it is first sold or 15 years after it is created, whichever is earliest. Protection by registered design is limited to a total period of 25 years and is renewable in five-year cycles. Unlike a trademark registration, design registration does not have use requirements.
Online issues
The ‘.uk’ domain name registry is Nominet UK. Nominet’s Terms and Conditions of Domain Name Registration, which apply to all UK domain names, provide that anyone registering or using a domain name in any way undertakes not to infringe the IP rights (including trademarks) of any other party, and that the domain name will not be used for any unlawful purpose.
In case of infringement, Nominet offers a standardised dispute resolution procedure – the Dispute Resolution Service (DRS). The DRS Policy, which automatically binds each registrant, provides that any legal or natural person may submit a complaint against an abusive registration. According to the policy, an ‘abusive registration’ refers to a domain name which was registered (or otherwise acquired) or is being used in a manner which takes unfair advantage of or is unfairly detrimental to the complainant’s rights in respect of a name or mark which is identical or similar to the domain name.
If the complainant succeeds, the domain name registration can be cancelled, suspended or transferred to the complainant.
Finnegan Europe LLP
16 Old Bailey
London EC4M 7EG
United Kingdom
Tel +44 20 7864 2800
Web www.finnegan.com
