Out-Law Guide | 30 Mar 2005 | 2:25 pm | 3 min. read
This guide was last updated in December 2017.
Scope of the trade mark right
Applications are filed at the UK Intellectual Property Office, an executiveagency, sponsored by the Department for Business, Energy & Industry.
A UK trade mark registration is a statutory right governed by the Trade Marks Act 1994. Trade marks can also be protected in the United Kingdom via common law rights established under what is called "passing off." Passing off rights are established by the use of a brand and the establishment of goodwill. However, it is preferable to register a mark, as opposed to relying on common law passing off rights, as you have to prove that you have established goodwill to succeed in a passing off action. Also, passing off rights can be limited to a local area, whereas a UK Trade Mark registration automatically covers the whole of the UK.
Under the 1994 Act, a proprietor of a registered trade mark in the UK has an exclusive right to use the registered mark in the UK in relation to the goods and services protected. All rights in a UK registration date back to day of filing, not to when the application is actually granted.
The UK is a signatory of the Paris Convention. This allows "convention priority" to be claimed. This means that an individual or company in the UK who has applied for a trade mark in one of the other member states can rely on the first application date ("the priority date") to backdate any later filed applications they make in the UK to that date. Those later applications must be filed within six months of the first application.
Information required to file an application
Procedure and time scale
Allow around eight months from the start of the process to the issue of a Registration Certificate. The following are the main steps in that procedure:
Step 1: You can conduct a search to determine if the mark is free to use and register (although this is optional). A basic text search can be done online for free. However, such text searches are very limited and cannot be relied upon to determine whether the mark is free to use and register. We recommend contacting a trade mark attorney to conduct a full availability search as this will search both similar and identical trade marks.
Step 2: File your application with the UK Intellectual Property Office, either on paper for £200 or electronically for £170 with an additional £50 for both applications for each additional class of goods or services you apply for. Within one week you should receive an official filing receipt. It is important to remember that all rights date back to the day the application was filed and not to when the application is granted.
Step 3: Unless you have requested an accelerated examination, at an additional cost of three hundred pounds, within twenty days of filing you should receive the official Examination Report. This may include the UK Intellectual Property Office's objections if your application is deemed unsuitable for registration. You will have two months to respond to these objections and they might be waived. The examination report incorporates an advisory search report relating to prior pending trade mark applications or registrations which the UKIPO feel are in conflict with your application. You can decide to ignore this search and push on with the application or you can counter the citations and argue they are unjustified. You have one chance to counter the citations. If you ignore the search results or are unsuccessful in overcoming the citations, but decide to push on with the application it will progress to advertisement.
Step 4: Your application will be advertised in the Trade Marks Journal for opposition purposes. It is at this stage that owners of any UK or Madrid Protocol rights identified in the search report will be notified of your application. Your application will be open to opposition for two months, with the possibility of an extension to three months by notification to the Intelletual Property Office. Assuming no objections are raised to the application, the application should be advertised within two months of the application being filed. If a formal opposition is filed, opposition procedures can last for two years or more. Many brand owners hire watching services that, like a search engine, will automatically search every published application for potential conflicts.
Step 5: Assuming the opposition period is not extended to three months, if there have been no objections in a period of two months from the date when the advert first appeared, the application is granted and a Registration Certificate is issued. This is typically six months from the date of filing.