Understanding United Kingdom Trademark Law

By Josh Gerben, Esq.

A trademark registered in the United Kingdom has valuable legal protections in England, Wales, Scotland, and Northern Ireland.

If you’ve recently registered your trademark in the U.S., you understand the benefits and rights a registered trademark provides.  These rights, however, only apply to trademark disputes within the United States.  To obtain legal protections for your mark internationally, you must register your mark in other countries.  Whether you currently have customers in the UK, or you hope to do business there in the future, it is critical to understand trademark law in the United Kingdom.

Types of Trademarks Accepted by the UK Intellectual Property Office

A trademark is anything that represents your business or brand to the public.  Common trademarks include business names, logos, and slogans.  In addition, the United Kingdom Intellectual Property Office recognizes sounds and colors as potential trademarks as well.  You can register one type of trademark or many, but each will need to be registered as separate trademarks in the UK.

The IPO also has guidelines on what marks cannot be registered in the UK:

• Obscene or offensive marks
• Marks that are misleading or deceptive
• Descriptive marks (For example, ‘cheesy’ for cheese crackers.)
• 3-dimensional shapes
• Commonly used or indistinct marks (The slogan, “Go Team” would be an example of an indistinct mark.)

The UK is a First-to-File Country

The United Kingdom grants trademark rights to the first business or individual to file a trademark application.  While you may have some rights to your mark simply by using it in the UK, those common law rights are very limited and may be challenging to prove in court.  First-to-file countries, like the United Kingdom, often experience higher rates of bad faith registrations.  These occur when a person with ill intent files for trademark registration with the intent to ransom the mark of its rightful owner at a much higher price.  Because of this, it is wise to consider filing your mark with the UK Intellectual Property Office as soon as possible.

It is important to note that in the United Kingdom, it is possible for a person to obtain registration for a mark, even if a similar mark exists.  During the registration process, an examiner at the IPO will review the trademark application and notify owners of similar marks of its status.  Those owners, then, may choose to ignore the notification, allowing the new mark to obtain registered status, or to file an opposition with the IPO.  These oppositions, however, can be both costly and time-consuming.  Therefore, it is wise to complete a comprehensive trademark search prior to filing with the IPO, to ensure that a similar mark has not already been registered in the UK.

Legal Protections Provided by a UK Trademark Registration

Maintaining exclusive use of your mark and control of your brand is essential to your future success in the United Kingdom.  Your UK registered trademark provides protections against infringement in several ways.  Once your trademark has been registered, you should begin using the registered trademark symbol wherever your mark is visible, from product labeling to storefront signs and marketing materials.  This provides public notice of registration to anyone seeking to unintentionally use the mark themselves.

Unfortunately, though, some people may wish to intentionally use an existing mark for their benefit.  If you discover infringement occurring, you can consider taking action against those businesses or individuals.  Often, a cease-and-desist letter is all that is needed to stop the infringement, but occasionally, your trademark attorney may suggest other action.  Keep in mind, however, that unregistered trademarks have a much weaker case in the courts than those with federal registration.   Also, you should always consult with a UK based trademark attorney before taking any legal action to ensure your enforcement attempt is appropriate under UK law.

Responsibilities of the UK Trademark Owner

While the IPO approves trademark registrations, the office does not monitor the exclusivity of their use.  As a trademark owner, it is your responsibility to actively monitor and police the use of your mark within the United Kingdom.  This can be a tedious task, but many trademark attorneys offer monitoring services for trademark owners, to make the process more manageable.  If possible infringement is found, it is imperative that you take the legal action granted to you as a trademark owner.  In addition, if you are contacted by the IPO about a similar mark’s registration, file an opposition as soon as possible to ensure you maintain exclusive control of the mark.

As long as you continue to use your trademark in the UK, the registration will not expire.  However, to maintain ownership of the mark, you must renew your registration every 10 years.  It is important to be aware of renewal dates as they approach and to begin the process well in advance of that date.  While the IPO does accept trademark renewals within six months after the renewal date, it is challenging to maintain trademark registration after that six month period lapses.  Failing to meet the deadlines set by the IPO could result in the cancellation of your trademark ownership.

UK Trademark Basics

As you consider UK trademark registration, it is important to be aware of trademark law.  Be sure that the mark you are wishing to register falls within the guidelines set by the IPO.  Understand the legal protections provided to you, and file your application as soon as possible, to avoid bad faith registration.  Once you’ve registered your mark in the UK, be aware of your responsibilities as a trademark owner.  Actively police your mark and renew by set deadlines.  These tips will ensure that your mark and your brand remains in your control.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.