Protecting Your Trademark in the United Kingdom

Why Apply for a UK Trade Mark?

According to statistics compiled by the World Intellectual Property Organization (WIPO), in 2019, the UK was the fourth most popular jurisdiction in which Canadians have registered their trademarks. It is unsurprising that Canadians see the value of protecting their trademarks in the UK given the two countries have strong trading relations, with $29 billion (CAD) worth of goods exchanged between them in 2019. Moreover, the UK is one of Canada’s largest services trading partners, only second to the US. With the enactment of the Canada-United Kingdom Trade Continuity Agreement (TCA) on April 1, 2021, the country remains an attractive market for Canadian businesses. If you have a business in the UK or run an e-commerce business catered to UK clientele, or plan to expand your operations into the UK, you can benefit from registering your trade mark in the UK.

There are several advantages to having a registered trade mark in the UK. First, because trademarks are territorial, a trademark registered only in Canada will offer you no protection in the UK. Nonetheless, there is some common law protection for unregistered trade marks in the UK. For example, you may bring a passing off action to stop another party’s unauthorized use of your unregistered or common law trade mark. To succeed in a passing off proceeding, you will need to prove, among other factors, that you have established goodwill in association with your mark (that is, the positive association with your mark that attracts consumers towards your goods and services rather than those of a competitors), the evidence of which can be challenging and costly to procure. By contrast, with a registered trade mark, you have the ability to bring an infringement action against an infringer of your mark; because infringement proceedings do not usually require evidence of goodwill, compared to passing off, infringement potentially allows for quicker and easier enforcement of your trade mark rights.

Second, it is essential to register your trade mark in the UK early, because similar to the European Union’s trademark system, the UK follows a first-to-file system. In short, a first-to-file system grants the first person who files for a particular trade mark, exclusive rights to the use of that mark, regardless of whether that individual had used that mark first. Thus, a first-to-file trademark system may attract opportunistic registrants who might register your mark before you and hold your mark hostage. Third, your trade mark application, if accepted, will be published in a central registry, which will put third parties on notice, and potentially deter them from using your mark or a similar mark. Therefore, you may avoid having to bring enforcement proceedings against third party infringers, saving yourself time and money. Fourth, a registered trade mark is a valuable asset because you can license your mark for a profit, or mortgage your mark for a loan. An additional benefit for licensees of trade marks in the UK is that due to amendments in the UK Trade Marks Act in 2019, a licensee has the right to intervene in infringement proceedings to seek compensation for damages.

Registering a UK Trade Mark

General considerations

To protect your trade mark in the UK, you can either file an application with the UK Intellectual Property Office (IPO), or designate the UK via a Madrid Protocol application. Note that, due to Brexit, as of January 2021, filing for a European Union-wide trade mark will no longer protect your mark in the UK.

If you choose to register your trade mark through the UK IPO, you may want to consider the following cost-effective strategies:

• What type of application is best suited for you? — You may choose to file a Standard application for £170 (approximately $265.10 CAD) or a Right Start application for £200 (approximately $311.89 CAD). For both applications, there is an extra charge of £50 ($77.97 CAD) for each additional class of goods and/or services. If you are unsure about the eligibility of your trade mark, a Right-Start application may be the better option. A Right Start application only requires a payment of £100 (approximately $155.94 CAD) upfront to receive an examiner’s report. The examiner’s report will give you an opportunity to consider any objections to your mark before you decide to proceed further. If you choose to proceed with your application, you will have to pay the remaining £100. Otherwise, if you decide that the objections are too difficult to overcome, you may choose to abandon your application with no further payment required.
• Does your mark meet eligibility requirements? — You will want to ensure your mark meets eligibility requirements because once submitted, UK trade mark applications are non-refundable. A UK eligible trade mark must be unique and may take the form of words, sounds, logos, colours, or a combination of the forementioned. Similar to trademarks in Canada, offensive marks, descriptive marks, misleading marks, non-distinctive marks, or state symbols are not protected in the UK. Additionally, if your proposed mark consists exclusively of a shape, you will not be successful in obtaining registration since signs consisting exclusively of a shape are prohibited from registration. The idea behind these eligibility requirements is that traders are not permitted to monopolize marks that are descriptive or non-distinctive.
• What classes of goods and/or services are associated with the use of your mark? — As each additional class costs extra fees, you may want to limit your classes only to relevant goods and/or services associated with your mark. Nonetheless, ensure you have included classes that are relevant to your future business activities, because applications cannot be altered after submission. In the future, if you wish to use your brand in relation to classes that you did not specify in your initial trade mark application, you will need to pay for an additional application. Consulting with a professional can help you decide on pursuing a trade mark strategy that best suits your business needs.
• Have you conducted a trade mark search? — Before filing for an application, it is important to conduct a trade mark search to identify existing marks, that are identical or similar in name to your trade mark, and cover the same goods and/or services as your trade mark. An examiner may use the forementioned marks as evidence to object to the registration of your trade mark. The results from a trade mark search will assist you in making an informed choice before you decide to proceed with a trade mark application. You will be in a better position to anticipate the likelihood of registering your mark successfully, or if need be, you can take steps to rebrand before filing for a trade mark application.

Timeline

After your trade mark application is filed, you can expect an examiner’s report within 12 weeks. The examiner’s report will detail objections to your application if any, in which case, you will have two months to resolve those objections. Objections may include your mark being overly descriptive or lacking distinctiveness, or being too similar to an existing trade mark or a mark in a co-pending application. If the examiner’s report has no objections, your trade mark application will be accepted and subsequently published in the UK Trade Marks Journal. After publication, generally, third parties will have two months to oppose the registration of your mark. Third parties may oppose your mark, for example, on the grounds that it will likely cause confusion with their existing trade mark.

Once you have overcome all opposition to your mark, or if your mark was not objected to by an examiner and not opposed by a third party, your mark will be registered. A UK trade mark is valid for an initial period of 10 years, and may be renewed every 10 years, for an indefinite period of time. After registration, it is important to maintain your trade mark by using it in relation to its goods and/or services within five years of registration. Otherwise, third parties may challenge your trade mark for non-use, and if they succeed, your trade mark registration will be revoked either entirely or partially, whereby some goods and/or services classes in association with your mark will be removed.

Conclusion

The common law offers limited protection for unregistered trade marks in the UK. Registering your trade mark may help you avoid costly enforcement proceedings, and instead, you can channel your resources to growing your brand and business. If you would like assistance with a UK trade mark application or with formulating a UK trade mark protection strategy, call us today for a complimentary and confidential initial telephone appointment.