KNOWLEDGE BASE International Trademark In The UK
On March 29, 2017, UK Prime Minister Theresa May triggered Article 50, which formally started the process whereby the UK will leave the European Union. Article 50 was just the beginning of the withdrawal process, as it allows the UK two years to negotiate its leave with the other EU member states. UK laws and regulations did not and will not change overnight. We will update our site with any relevant changes and information as it becomes available. You can learn more on the UK government site.
International Trademark In The UK
A trademark is a type of protected intellectual property and is considered an important intangible business asset. Acquiring a trademark can give your business partners and investors more confidence in your business, which can help you to collaborate with more partners and to raise equity to further develop your business. A trademark not only protects your creations, but can also maximize the value of your creation because you have the ability to license it out to a franchisee or sell it outright.
Filing for a trademark in the UK or for an international trademark is complicated and the risk of getting it wrong is significant. You can find more information and steps to prepare you for the trademark application process in the Trade Marks & Patents section of the UK Expansion Plan.
What is a trademark?
A trademark is a sign or mark that you can use to identify and distinguish your company’s goods or services from another company’s goods or services. By registering your trademark, you can prevent others from using its name or logo. Once a trademark has been registered, it is protected indefinitely as long as you renew it every 10 years.
What law or regulations apply?
The Trade Marks Act 1994 governs the registration and protection of trademarks in the United Kingdom. The Intellectual Property Office is tasked with administering the Trade Marks Act 1994 according to the Trade Marks Rules.
In the United Kingdom you are not required to register your trademark. If you have a mark that is not registered, you may rely on your rights under the common law act of “passing off” to protect your mark against imitation or infringement. However, it can be difficult and expensive to prove a passing off action.
Trademarks must be unique and can include:
a combination of these.
Your trademark cannot:
be offensive e.g., contain swear words or pornographic images
describe the goods or services it will relate to
be misleading, e.g., use of the term ‘organic’ if the goods are not organic
be a 3-dimensional shape associated with your trademark e.g., use of the shape of an egg for eggs
be too common and non distinctive e.g., a simple statement
look too similar to state symbols like flags or hallmarks, based on the World Intellectual Property Office Guidelines
Although you are not required to file your trademark application through an agent, you may wish to appoint an agent to act on your (your company’s) behalf. Because every company has different needs and because the trademark process can be complex and lengthy, we recommend that you speak with an attorney about the scope of your rights.
To show you have a registered trademark you can display the ® symbol next to your trademark. In the UK ® is the sign for a registered trademark. Some people use ™ next to their trademark but this does not have any legal meaning in the UK.
International application process: Through the WIPO
For international trademark protection, you can either file an application in each country in which you wish to have your trademark protected or you can register your trademark internationally through the Madrid Protocol. The Madrid System allows you to file one application in a single office (in Switzerland) in one language with one fee (in Swiss Francs) to protect your trademark in up to 95 member countries.
If you decide to file your application internationally, you must first register or file an application in your “home” office, in this case the UK. You must be a resident or citizen of the UK (or have a real and effective industrial or commercial establishment in the UK) to use the Madrid Protocol to register your trademark across multiple countries. Then you will need to submit your international application with the International Bureau of the World Intellectual Property Organization (WIPO). Details of your application in the Madrid System will be sent to the IP offices in each country you wish to have your trademark protected. The countries in which you seek to register your trademark must be Madrid Protocol member countries. Each country will make a decision in accordance with their legislation (in the UK this process will be very similar to the application process explained above) and record their decision with the WIPO.
The international registration of your trademark is valid for 10 years and can be renewed at the end of each 10-year period directly through the WIPO.
What are the risks of noncompliance?
If you discover that your trademark has been used without your consent, you may exercise your rights under the Trade Marks Act 1994. In an action for infringement of a registered trademark by the proprietor of the trademark, the court may grant the following types of relief:
monetary damages; and
an account of profits.
In certain circumstances, the court can also order the erasure, disposal, or delivery up of the infringing goods. Infringement may also rise to the level of criminal conduct, and be prosecuted as such, in certain circumstances.
KNOWLEDGE BASE International Trademark In The UK