The UK Trademark Protection System

In the UK, the rights holder of an unregistered trademark that has already been used and has a certain degree of goodwill can obtain common law protection, known as passing off protection, but whether they can obtain protection depends on various factors, such as whether the unregistered trademark was used earlier, whether it would cause confusion or fraud, and so on.

Like other countries, trademark registration can provide better protection. The trademark applied for registration can be one that has already been used or one that the applicant intends to use in good faith. The UK Intellectual Property Office is responsible for trademark registration and management, and the application registration process usually takes at least 4 months.

After the Brexit transition period ends on January 1, 2021, EU trademarks can be automatically converted into UK trademarks. The application date for such UK trademarks is the same as that of existing EU trademarks, but the rights holder needs to change the address of the UK trademark.

 

UKIPO Introduction to the UK Intellectual Property Office

The UK Intellectual Property Office (UKIPO) is the official government agency responsible for intellectual property rights in the UK, with offices in Newport and London. The responsibilities of UKIPO include: formulating intellectual property policies; Provide education to businesses and consumers on intellectual property rights and responsibilities; Support intellectual property law enforcement; Grant UK patents, trademarks, and design rights.

Website: www.gov.uk

Address: Intellectual Property Office, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ, United Kingdom (Newport headquarters)

Intellectual Property Office, 3rd Floor, 10 Victoria Street, London, SW1H 0NB (London Office)

Phone:+44 (0) 1633 814000 (overseas) 0300 300 2000 (domestic in the UK)

Email：information@ipo.gov.uk

Introduction to UK Trademark Registration

3.1 Trademark registration conditions

The mark applied for registration as a trademark must have distinctiveness, that is, be able to distinguish its products or services from those provided by others.

Words, designs, letters, numbers, product shapes, or their packaging can all be registered as trademarks in the UK, but certain signs cannot be registered (Sections 3-8 of the Trademark Act 1994), mainly for the following reasons:

1. Aggressive, such as containing profanity or obscene images;
2. Describe the goods or services involved, for example, the word ‘cotton’ cannot become a trademark of a cotton textile company;
3. Misleading, such as using the term ‘organic’ for non organic goods;
4. It is a three-dimensional shape related to the trademark, such as the shape of an egg;
5. Too common and not significant, such as a simple statement;

According to the guidelines of the World Intellectual Property Organization, it appears too similar to national symbols such as flags or logos.

3.2 Collective Trademarks and Certification Trademarks

In addition to ordinary trademarks, there are also collective trademarks and certification trademarks in the UK, some of which do not have the same functions as ordinary trademarks..

Collective trademarks can be used to indicate that products or services bearing the trademark come from members of organizations such as chambers of commerce. (Article 49 of the Trademark Law of 1994)

Proving a trademark can ensure that products or services bearing the trademark meet specific standards or have specific features. The trademark owner determines the definition of a specific standard or feature, and the trademark owner is usually a chamber of commerce, government department, technical institution, or similar organization. (Article 50 of the Trademark Law of 1994).

3.3 Trademark Rights

After registering a trademark, the rights holder will be able to:

(1) Take legal action against anyone (including counterfeiters) who uses its trademark without permission;

(2) Will ® Place the symbol next to the trademark to indicate that the mark has been registered and warn others not to use it;

(3) Sell and license its trademark.

3.4 Trademark Infringement

Using a trademark that is identical or similar to a registered trademark on the same or similar products or services may cause public confusion, which constitutes trademark infringement. If a registered trademark becomes a well-known trademark, using a trademark that is identical or similar to the registered trademark on different and dissimilar products or services, even if it does not cause public confusion, is still considered trademark infringement if it damages or exploits the reputation of the registered trademark.

 

UK Trademark Registration Procedure

In the UK, applicants can only apply to register one trademark or one trademark series (series, up to a maximum of 6 logos) at a time. A trademark series refers to a series of substantially similar trademarks, whose differences cannot substantially affect people’s recognition of the trademark, that is, they look or sound basically the same, have the same meaning, and have minimal differences in any aspect.

In addition to filing an application directly in UKIPO, applicants can also register trademarks in the UK through the Madrid trademark registration process. If a trademark registration application has already been filed in China and the same trademark registration application has been filed in the UK within 6 months, priority can be claimed.

According to the requirements of UKIPO, applicants should provide an address for service in the UK, Gibraltar, or the Channel Islands. Therefore, Chinese applicants may need to entrust agents to handle relevant procedures.

4.1 Procedure for Directly Applying for Trademark Registration with UKIPO

4.1.1 Preparation before application

Before submitting a trademark registration application, the applicant must conduct a trademark search. Retrieve the UKIPO trademark database to see if others have already registered similar or identical trademarks for the same or similar products or services. Through UKIPO’s online trademark journal (published weekly), you can view trademark applications that have been accepted but not yet registered. If someone else has already registered the same or similar trademark, the applicant can seek a letter of consent from the registered trademark owner.

The applicant must also check the EU trademark registration status on the website of the European Union Intellectual Property Office to understand any EU trademark applications pending as of January 1, 2021. These applications have priority over the currently submitted applications.

When applying for trademark registration, the applicant must use a classification system to specify the goods and/or services on which the trademark will be used. Through UKIPO’s online service, you can inquire about the categories of products or services that need to be determined when registering a trademark in the UK, and also consult UKIPO via email.

4.1.2 Submit Application

Trademark registration applications in the UK can be submitted in paper form – by mail or email, or online. Online application fees are relatively low.

When applying, materials such as an application form, trademark images or photos must be submitted. If the materials meet the basic requirements of UKIPO, the application date shall be the date on which the agency receives the application; If the application requirements are not met, the application date will be the date on which UKIPO receives the last document to meet the basic requirements of the application.

The basic requirements for obtaining the application date include submitting:

(1) A trademark registration request, usually in the form of Form TM3, can also be a letter clearly stating that a trademark is to be registered.

(2) The applicant’s name and address.

(3) Declaration of goods or services applying for trademark registration.

(4) The representation of a trademark – The logo should be presented in a clear, accurate, independent, easily accessible, understandable, enduring, and objective manner to enable the competent authority and the public to clearly and accurately determine the subject matter for protection to its owner. The acceptable trademark types and corresponding application document formats in the UK are as follows:——

Text trademark: Text files must be submitted in standard layout and font, without any graphic features, colors, or styles;

Graphic trademarks: JPEG, TIFF, GIF, PNG, can be composed entirely of graphic images or a combination of text and graphic elements;

3D trademarks: JPEG, TIFF, GIF, PNG, OBJ, STL, X3D, files not exceeding 20MB, can be containers, packaging, product itself or its appearance;

Pattern trademarks: JPEG, TIFF, GIF, PNG, composed entirely of a set of regularly repeating elements;

Color trademarks: JPEG, TIFF, GIF, PNG, composed of a color or color combination, must provide a written description of the color and use internationally recognized methods to indicate which color recognition system is used for these colors, such as Pantone ®、Focoltone ®、Munsell Color ® Or Toyo ®；

Sound trademark: MP3 (file size not exceeding 2M) or JPEG, TIFF, GIF, PNG that accurately represent the melody or melody in sheet music; Composed of one or more sounds, which can be sheet music or other sounds, such as the sound of a person speaking or singing, or the call of an animal;

Dynamic trademarks: MP4 (not exceeding 8000Kbps, file size not exceeding 20M) or JPEG, TIFF, GIF, PNG. If submitted in the form of video files, no trademark description is required. Applications submitted in a series of still images must be accompanied by image descriptions: (1) what the image depicts – what changes in appearance are, (2) how many images are involved in the complete motion sequence, (3) what is the order of the images, and (4) there is a single (immutable) motion sequence;

Multimedia trademark: MP4, a trademark that combines action and sound, is not a dynamic trademark and should be applied for as a multimedia trademark;

Holographic trademarks: JPEG, TIFF, GIF, PNG, MP4 (not exceeding 8000Kbps, file size not exceeding 20M), including views required to fully recognize holographic effects.

For all audio and video files, UKIPO does not accept physical memory such as USB drives submitted with paper documents, and can only submit electronic files.

Other requirements beyond the basic requirements for obtaining the application date include:

(1) Each applicant must currently be using (or allowing others to use with their consent) the trademark, or have a good faith intention to use the trademark for the requested goods or services. The statement on the application form should indicate this and must be signed by the applicant or their representative.

(2) The applicant must pay a basic application fee, which covers a category of goods or services. If more categories need to be specified, additional fees need to be paid for each category.

(3) Those who have not submitted Form TM3 should submit a formal application form within one month.

(4) Specify the category of goods or services.

(5) Provide delivery addresses in the UK, Gibraltar, or the Channel Islands.

If any of the above application requirements are not met, USPTO will send a letter to the applicant explaining the reasons why the application is not accepted and giving the applicant one month – calculated from the date of USPTO’s letter and not extended – to make up for the shortfall.

If it is not corrected within one month and does not meet the basic requirements, the application will be deemed never to have been submitted; If it does not meet other requirements, the application shall be deemed withdrawn.

For more information, please refer to the Trademark Practice Handbook provided by UKIPO (updated on January 19, 2022).

4.1.3 Review

The applicant will receive an examination report within 4 weeks (20 working days) after submitting the application and paying the fees, which will indicate whether their application meets the registration requirements. The review content includes whether the classification of products or services is correct, whether the trademark has distinctiveness, and whether there are prior rights.

If there are any issues with the application, the applicant must correct or modify it within 2 months.

The UK has a divisional application system, which separates multiple independent applications from one application, and continues to review applications that do not have any issues, while applications with issues are resolved separately.

When the applicant disagrees with the examiner’s opinion or believes that their application has been unfairly processed, they may request an Ex Parte hearing.

Those who are dissatisfied with the final decision of the hearing may appeal to the High Court of England, Wales, Northern Ireland or the High Civil Court of Scotland. Relevant personnel can also appeal to senior intellectual property personnel designated by the Ministry of Justice. Compared to appealing to the court, the cost of appealing to the appointed person (AP) is lower, but their decision has final effect and cannot be appealed again.

4.1.4 Disclosure and Objections

If the examination is approved, the application will be published in a trademark journal for a period of 2 months, which can be extended to 3 months.

Before a trademark is registered, anyone can file an opposition to the application. If others raise objections and the applicant decides to continue applying for registration, UKIPO will conduct inter party hearings, including procedural hearings, case management meetings, dispute hearings, and other forms.

If both parties are dissatisfied with the hearing results, they may appeal, and the specific appeal procedures are the same as above.

4.1.5 Registration

At the end of the objection period, the applicant must wait an additional 2 weeks to process any objections approaching the deadline.

After no objections are raised or all objections are resolved, the trademark will be registered and the applicant will receive a certificate to confirm this.

The registration is valid for 10 years from the date of application for registration, and can be renewed continuously. Each renewal is also valid for 10 years.

 

Introduction to UK Trademark Office Fees

project	Amount (GBP)
Online application	1 product/service category	170
	Each additional category	+ 50 / Class
Paper application (whether by mail or email)	1 product/service category	200
	Each additional category	+ 50 / Class
Renewal	1 product/service category	200
	Each additional category	+ 50 / Class
	Overdue renewal	50
	Request to restore and update registration	100

 

For more information, please refer to the UKIPO trademark related procedural forms and fee guidelines.