A trademark is a valuable asset for any business because it serves as distinctive sign, logo, or word that identifies and distinguishes goods and services in the marketplace. Protecting your trademark means protecting your business, your reputation, and your customers, as it prevents others from using similar marks.
Trademarks in the UK are primarily governed by the Trademarks Act 1994. While trademark registration is not required because of common law “passing off” rights, registration gives the owner stronger legal protection. It grants the owner exclusive legal rights to use their mark for the specified goods and services and the ability to licence, franchise or even sell it. Arguably, understanding the trademark registration process and the rights it confers is essential to safeguarding your business identity.
Application Process
Trademarks in the UK are generally registered with the Intellectual Property Office. The UK operates a first to file system which means the first applicant, not necessarily the first user, has superior legal rights. To register a trademark in the UK, it is advisable that a comprehensive search of existing marks is done to avoid conflict and costly legal disputes later on.
The application is then filed with the UK Intellectual Property Office (UKIPO), including key details such as the trademark itself, the owner’s information, and the classes of goods or services covered. The UKIPO examines applications for compliance with legal requirements and considers any grounds for refusal, such as whether the mark is descriptive or too similar to existing trademarks.
If accepted, the mark is published in the UK Trademarks Journal for a two-month opposition window. Extensions to this period may be granted upon request. If no oppositions arise, or any disputes are resolved, the trademark is registered. Registration lasts for ten years and can be renewed indefinitely, ensuring long-term protection. However, if it is not used for five years, it could be revoked.
What You Can and Cannot Register
You can register words, designs, letters, numerals, colour, sounds or shapes of goods and packaging as long as they are distinguishable from other marks. However, registration will be refused if the mark is either not distinctive (generic/descriptive), misleading/offensive, conflicts with an existing registered UK trademark, or reflects common product shapes.
Need to Know
It is worth noting that registering a mark in the UK only protects you in the UK. Since Brexit, the UK now operates outside of the EU’s trademark system and as a result EU Trademark (EUTM) registrations no longer provide protection in the UK. Therefore, if you are an international business, you may have to register under the EUTM to gain protection in the EU. Alternatively, using the Madrid Protocol, you may be able to register in over 125 countries through a single application after the UK registration is in place.
Contact Us
If you need help registering your trademark, Contact Nath Solicitors in London on 0203 983 8278 or contact the firm online.