UK Trademark Registration: A Comprehensive Guide
A trademark is a distinctive mark or symbol used by a business to make its products or services recognizable to consumers. It can appear in various forms, such as a word, logo, color, shape, sound, jingle, font, or a combination of these elements. In the UK, trademarks can either be registered, providing legal protection against unauthorized use, or unregistered, where protection is more limited and requires proving the trademark’s established use in the market. Registering a trademark helps safeguard a brand’s unique identity.
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Registered trademarks
Registering a trademark grants the owner exclusive rights to use the mark in marketing associated goods or services. It also allows the owner to prevent others from using similar marks to promote competing products. In the UK, trademark law is primarily governed by the Trade Marks Act 1994, which outlines the rights and protections for registered trademarks. Specifically, section 10 of the Act addresses trademark infringement, detailing the conditions under which using a similar or identical mark may be considered unlawful.
- A person infringes on a registered trademark if they use a sign identical to the trademark in the course of trade for goods or services that are identical to those for which the trademark is registered.
- A person infringes on a registered trademark if they use, in the course of trade, a sign where:
- The sign is identical to the trademark and is used for goods or services similar to those for which the trademark is registered.
- The sign is similar to the trademark and is used for goods or services that are identical or similar to those for which the trademark is registered, creating a likelihood of confusion among the public, including the possibility of association with the trademark.
- A person infringes on a registered trademark if they use, in the course of trade, a sign in relation to goods or services that:
- is identical or similar to the trademark.
- where the trademark has a reputation in the United Kingdom and the use of the sign, without due cause, takes unfair advantage of or is detrimental to the distinctive character or reputation of the trademark.
The Trade Marks Rules 2008 outlines the procedure for applying to register a trademark with the Intellectual Property Office (IPO). It also governs various administrative processes, including renewal, revocation, and appeals.
Note: The Trade Marks Regulation 2018 is another significant piece of legislation. This law, derived from European regulations, has introduced various amendments to the Trade Marks Act and the Trade Marks Rules.
Unregistered trademarks
If a business uses a mark or sign to distinguish its products, it may still have legal protection even if the mark isn’t registered. This protection applies if the trader has gained ‘goodwill’ associated with the mark, meaning customers recognize the products or services because of it. If another business uses an “‘unregistered trade mark’” to deceive consumers into believing they are buying from the original trader, the affected business can pursue a legal claim for ‘passing off’ to protect its reputation and customer base.
What is the Intellectual Property Office (IPO)?
The Intellectual Property Office (IPO or UKIPO) is the UK government’s official body responsible for managing trademarks and other intellectual property rights, such as copyrights and patents. Businesses looking to register a trademark must apply to the IPO, which also oversees the majority of related administrative procedures.
The UKIPO should not be confused with the European Union Intellectual Property Office (EUIPO) or the World Intellectual Property Organization (WIPO).
The EUIPO is responsible for EU trademarks and registered Community designs, collaborating with IP offices across EU Member States, including the UKIPO. The WIPO, a self-funding agency of the United Nations, serves as the global forum for intellectual property services, policy, information, and cooperation.
What can (and cannot) be registered as a trademark?
A trademark can include:
- Words
- Sounds
- Logos
- Colors
- A combination of any of these elements.
However, to be valid, a trademark must be unique. The level of uniqueness often determines whether it can be registered or not. For example, a basic colored shape is typically not unique enough to qualify for registration.
Trademarks cannot include the following:
- Offensive content, such as swear words or pornographic imagery.
- Descriptive terms related to the goods or services, like using “coffee” for a coffee roasting company.
- Misleading terms, such as “caffeinated” for drinks without caffeine.
- 3D shapes associated with the trademark, like a cylindrical shape for a packaging manufacturer.
- Common or non-distinctive elements, such as a basic colored shape.
- Symbols that are too similar to state symbols, like flags or hallmarks.
What is a series application?
Businesses looking to register multiple similar versions of a trademark can submit a “series application” for up to six different marks at once. All the marks must be similar, with only minor differences permitted, such as looking, sounding, or meaning the same.
Trademarks must be unique
A specific mark can generally only be registered once for a particular type of goods or services. A similar mark cannot be used if it might confuse consumers. Therefore, it is important to search the trademarks database before submitting an application to register a mark.
However, you can request a “letter of consent” from the existing owner of a trademark if they agree to grant permission to register a similar mark. This letter must be submitted along with the application.
Why should I register a trademark?
As mentioned earlier, you can claim ownership of an unregistered trademark. In such cases, the law of “passing off” can be used to prevent a competitor from using a similar mark to promote their goods or services. It is necessary to prove:
- ownership (of the unregistered trade mark)
- goodwill (that has been built up and is associated with the mark)
- harm (caused by the competitor’s use of the mark)
However, defending a registered trademark is much more straightforward, as it offers a greater level of legal certainty and intellectual property protection for your business.
How do I search for existing trademarks?
There are several methods for searching trademark databases to determine if a similar one already exists and who owns it:
You can also search through the IPO’s trademark journal to find any applications or amendments made in the last week.
How do I register a trademark?
To apply online to register a trademark, you need the following:
- Trademark details: A description of the trademark, along with any graphics.
- Trademark classes: Each class of goods and services has a list of pre-approved terms; for example, class 25 includes clothing, footwear, and headgear.
More information on registration can be found in the Government’s Trademarks Manual.
Alternatively, register with Startxpress and let us handle the process while you focus on your business. Start your trademark registration today with Startxpress.
What happens after you submit an application?
You will receive an examination report within 20 days after submitting a trade mark application. If the report identifies any objections, you must resolve them within a two-month timeframe.
Applications that are approved at this stage will then be published in the trade marks journal for two months, allowing third parties to submit any objections.
If there are no objections, or any raised issues are resolved, the trade mark proceeds to registration. You will then receive a certificate confirming the registration.
A registered trade mark lasts for 10 years and must be renewed after that period.
How do I object to someone else’s trade mark?
As mentioned earlier, applications are published in the trademarks journal for two months. During this period, third parties can object to the registration in two ways:
- Third-party observations: Non-legal action.
- Opposing a trademark: Legal action.
Given the complexity of trademark law, it is advisable to consult a trademark lawyer for assistance with searches, registrations, or objections to applications.
Do you have any other questions?
We’ve covered the essentials of UK trademark registration, including the benefits of securing a trademark, how to apply, and what to do if objections arise. Registering your trademark provides stronger legal protection for your brand and ensures that your business stands out in a competitive market.
For more in-depth information, visit the Startxpress Help Center and Blog. If you need help with the registration process, don’t hesitate to reach out at support@startxpress.io. We’re here to assist you!
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