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A Guide to UK Trademark Law

A Guide to UK Trademark Law

While our expertise lies in resolving trademark disputes, we can also advise on the entire process of trademarking your intellectual property and assets. Below is a brief guide to UK trademark law with advice on how to prevent or resolve disputes. Arrange a consultation with us now. We will provide you with all the recommendations and advice needed to solve your trademark law query.

A guide to UK trademark law by Selachii LLP’s UK trademark disputes lawyers

What is a Trademark?

A trademark is a name, word, phrase, logo, symbol, design, image, sound, shape, signature or any combination of these elements that distinguishes your business, product or service from that of your competitors.

Your trademark, once registered, protects your business’s brand and acts as a guarantee of origins. Trademarks allow consumers to differentiate between products and services.

What is the law on Trademarks in the UK?

In the United Kingdom, the relevant legislation is the Trademarks Act 1994. This Act implements European Directives that create a uniform framework for Trademarks across the European Union.

What Can Be Registered as a Trademark?

Under the Trademarks Act 1994, a Trademark is defined as “any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods and services of one undertaking from those of other undertakings”.

Your brand will only be capable of being trademarked if it is sufficiently distinctive and identifies your business and/or products or services as unique or individual. Your brand can be a combination of words, pictures and or logos.

What can’t you Trademark?

It’s a common misconception that all logos, brands, designs and symbols can be trademarked. However, the law is clear about what can and can’t be trademarked. You cannot, for instance, trademark:

  • Anything that describes the goods or services, their place of origin or a characteristic of your goods or services. For instance, you cannot trademark terms like “Cornish Clotted Cream”.
  • A term that is customary or popular in a particular trade.
  • Is not distinctive.
  • Is a 3D shape that is typical of the goods you are selling.
  • Is a protected emblem, such as a flag, a hallmark or other official sign.
  • Is offensive or against the law.
  • Is deceptive or misleading about the nature of the goods or product or service.

How Do I Trademark My Brand?

If none of the criteria above are infringed (that is to say the Trademark is sufficiently distinctive) then your business can apply for a Trademark. Applications are made to the Intellectual Property Office (IPO). They are responsible for all Trademark applications in the UK, and they operate a three-step process. This process is as follows.

Data Capture

When the IPO receives an application for a Trademark, it will establish that the application answers the following questions:

  • Is there a clear representation of the brand for which the Trademark is being applied for?
  • Is there a list of the goods and services that this Trademark represents?
  • Are there contact details for the individual or business that is applying for the Trademark?

Then, all of this information is entered into the IPO’s database. These details are then made public. (If an applicant would rather their home address is not made public, they can provide the IPO with an alternative address to publish. Normally, the IPO will issue you with an application number within 6 days of receiving the relevant information. 

Examination

Once you have given the IPO the necessary information, they will then exam the substance of your application. At this point, they will decide whether it complies with the legislation as described above.

The IPO will then send you an ‘examination report’ which will detail whether or not your application has been accepted. If it hasn’t, they’ll explain the reasons why not. You’ll also be given a deadline to reply to the findings.

One of the major reasons for refusal of a Trademark is that an earlier, similar, Trademark has already been registered and might conflict with your application. This is usually because the brand, services or product is similar to an already registered mark. If your application is refused on these or other grounds, the IPO will allow you to discuss matters with them for a period of two months.

If a similar Trademark exists, and you decide to continue with your application, the IPO will contact the owners of the other Trademark to notify them that a similar Trademark is about to be published.

If the IPO find no reason to object to your application then the final step takes place.

Publication

If your application reaches this stage, then your Trademark will be published in the IPO’s weekly Trademark Journal. This publication includes all of the details of the application including the name and address of the applicant.  

Once published, there will be no more activity from the IPO for two more months. This is known as the ‘opposition period’. Any parties that the IPO has contacted regarding an application (or any other party that feels it necessary to do so) can oppose your Trademark application. If a party does choose to object, they can have this period extended to three months.

If there’s no opposition to an application, the Trademark will be registered. The date on which the Trademark is registered is known as the ‘registration date’. This is normally two weeks after the opposition period finishes.

While your Trademark can give your business protection, it is also an expensive process. The process of applying involves the payment of a series of fees to the IPO. Therfore, it is an important commercial decision whether or not to pursue a Trademark to protect a business.

What Should I Do If Someone Opposes My Application?

The IPO encourages applicants and parties who oppose applications to try to resolve the matter together, to see if there is a solution that suits them both. If the parties cannot resolve their dispute, then the matter is normally referred to a tribunal.  

Tribunal requirements are quite complex, so if things get to this stage then give us a call in order that we can steer you through this part of the process.

How Do I Use a Trademark?

Once your trademark is granted, then it is protected by law. No one else is permitted to use a similar or identical brand to sell or market similar or identical products or services.

Although a Trademark is designed to stop your competitors from copying your goods, products or services, it can provide other opportunities. You can, for instance, allow others to use your trademark on licence.  If you decide to enter into such an arrangement, we would strongly advise taking our advice first. You can also use your Trademark as security over a loan.

How Long Does a Trademark Last?

Your Trademark lasts for a period of ten years after the date of the original application. After this, you need to renew the Trademark to keep it in force. There is a fee for this. If you fail to renew the Trademark within six months of the renewal date passing, there is a further six months within which the owner can restore the Trademark. Again, this carries a fee.

If you are late to renew, you will need to demonstrate to the IPO why you did not renew on the relevant date. If not convinced, the IPO may refuse renewal.

How Do I Enforce My Trademark?

As mentioned above, Trademark protection can bring a great deal of commercial value to your business. As a result of this, competitors may attempt to infringe your Trademark. Both the IPO and the courts suggest that you pursue litigation only as a last resort. Instead, they encourage parties try to resolve disputes amicably. The IPO recommends mediation as a dispute resolution procedure. This is often cheaper and quicker than going to court.

If you are unable to resolve your dispute, or if you are unable to resolve matters through mediation, then you may need to go to court.  If matters get this far, then you will need to take the advice of an expert trademark dispute lawyer.

Contact Our Trademark & Trademark Disputes Lawyers

Selachii is a dynamic litigation law firm based in Kensington, London. We put the best interests of our clients at the heart of everything we do. We work with both businesses and private individuals, giving them legal advice and support which is unique to them and their situation. Arrange a consultation with us now. We will provide you with all the recommendations and advice needed to solve your trademark law query. Contact us today.

How Selachii Can Help

Fraud is an issue that demands extreme tact as well as often needing great doggedness and attention to detail. We don’t believe in simply handing out one-size-fits-all solutions to problems. We will focus on your specific circumstances before working out the best and most cost-effective way of helping you achieve your aims.

Selachii is a dynamic litigation law firm based in Kensington, London. We put the best interests of our clients at the heart of everything we do. We work with both businesses and private individuals, giving them legal advice and support which is unique to them and their situation.

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