10 Sep
2018

Trademark procedures and strategies: United Kingdom

Keltie LLP

Legal framework

Trademark law in the United Kingdom is governed by the Trademarks Act 1994. The act implements the EU Trademark Directive (2015/2436) and the EU Trademark Regulation (2017/1001), resulting in EU trademarks having effect in the United Kingdom.

The United Kingdom is also a member of the World Intellectual Property Organisation and signatory to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, meaning that protection can be designated in the United Kingdom (including under EU trademarks) under an international registration.

Unjustified threats provisions were amended by the Intellectual Property (Unjustified Threats) Act 2017.

The United Kingdom is also a member of numerous international treaties relating to trademarks, including:

  • the Paris Convention for the Protection of Industrial Property;

  • the Agreement on Trade-Related Aspects of Intellectual Property Rights;

  • the Nice Agreement Concerning the International Classification of Goods and Services; and

  • the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.

Unregistered marks

Unregistered trademarks can enjoy protection under the common law tort of passing off.

To succeed in a claim of passing off, the claimant must establish that:

  • goodwill exists in the business of the goods or services provided under the trademark;

  • a misrepresentation (whether intentional or innocent) has been made by the defendant, likely to lead the public to believe that the defendant’s goods originate from the claimant; and

  • it has suffered, or is likely to suffer, damage as a result of the defendant’s actions.

Goodwill is decided on a case-by-case basis. It must be local to the United Kingdom and more than mere reputation. The trademark need not be well known and there is no minimum timescale for which the trademark must have been used.

Although passing off is a separate cause of action to registered trademark infringement, it can be run in conjunction with such an action.

Registered marks

In the United Kingdom, any legal or natural person can apply for registered trademark protection, provided they declare that the mark is being used by them, or with their consent, or there is a genuine intention to use the mark for the goods and services specified. There is no need for a power of attorney.

In terms of what can be protected, the act states that: “a ‘trademark’ means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trademark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.”

This non-exhaustive list has been further extended by case law which has found that sound, smell and taste signs, for example, can also be registered.

Collective and certification marks are also registrable in the United Kingdom.

Trademarks that cannot be protected in the United Kingdom include signs that:

  • cannot be represented graphically or are incapable of distinguishing the goods or services of one undertaking from those of another;

  • are devoid of distinctive character;

  • consist exclusively of descriptive characteristics of the goods or services;

  • have become generic or customary in the current language or genuine and established practices of the trade;

  • consist exclusively of a shape which:

    • results from the nature of the goods themselves;

    • is necessary to obtain a technical result; or

    • gives substantial value to the goods;

  • are contrary to public policy or accepted principles of morality;

  • are deceptive in nature;

  • have been applied for in bad faith;

  • consist of or contain the royal arms, a representation of the royal crown or any royal flags or a representation of any member of the royal family without consent;

  • consist of or contain the national flag of the United Kingdom or of England, Wales, Scotland, Northern Ireland or the Isle of Man, if use of the trademark would be misleading or grossly offensive; or

  • consist of or contain Olympic symbols without authorisation.

These are known as the absolute grounds for refusal.

Procedures

Examination procedure

The Intellectual Property Office will first examine a trademark application to ensure that it meets the formal requirements for filing. It will then conduct its substantive examination to ensure that the specification of goods and services is clear and correctly classified and that the registration of the sign is not prohibited by the absolute grounds for refusal, excluding bad faith. If objections are raised, the applicant initially has two months to respond.

Examination reports will contain the results of a search for earlier conflicting marks. In the event that conflicting rights are identified, the applicant may amend the specification, withdraw the application or, assuming that there are no other objections, proceed. If the application proceeds for conflicting goods, the Intellectual Property Office will notify earlier UK rights holders (but not owners of EU trademarks) of publication of the application. It is then for the earlier rights holder to decide whether to oppose.

Opposition

Following examination, provided no objections remain, applications are published for opposition purposes. The initial opposition period is two months from the date of publication. If a notice of threatened opposition is filed during that period, the opposition period is extended to three months from the date of publication.

An application can be opposed on the basis of any of the absolute grounds discussed or where there exists:

  • an earlier identical trademark for identical goods or services;

  • likelihood of confusion with an earlier trademark, which includes the likelihood of  association;

  • an earlier trademark with a reputation in the United Kingdom or European Union where use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark;

  • an earlier unregistered trademark or other sign used in the course of trade (ie, passing off); and

  • earlier copyright, design rights or registered designs.

An ‘earlier trademark’ is recognised as being:

  • an earlier UK national application or registration;

  • an earlier EU trademark application or registration;

  • an earlier international application or registration designating the United Kingdom or the European Union; and

  • an earlier trademark entitled to protection in the United Kingdom under the Paris Convention or the Agreement on Trade-Related Aspects of Intellectual Property Rights.

In the event of opposition, the applicant is given two months to file notice of defence or enter into a cooling-off period. If the applicant does not respond, the application is deemed to be abandoned in relation to the opposed goods and services.

Agreement of both parties is required to enter into a cooling-off period. The initial cooling-off period lasts seven months beyond the initial two months and can be extended a further nine months. Either party can terminate the cooling-off period without notice.

The opponent has two months from receipt of a notice of defence to file its submissions and evidence. The applicant then has two months to file its submissions or evidence, and the opponent has a further two months to reply. On completion of the evidence rounds, the hearing officer will make a decision based on the written submissions and evidence before it or after a hearing, should a hearing be requested.

Where an opposition is based on an earlier trademark which has been registered for five years or more, as at the date of publication of the opposed application, the applicant may put the opponent to proof of use of the earlier mark.

Cost awards in proceedings are generally issued to the successful party and the Intellectual Property Office has discretion to determine the level of the award from a published scale of costs.

A standard opposition is likely to take 12 to 18 months from filing to decision.

Registration

Provided that no opposition is filed, or once an opposition has been successfully overcome, the mark will proceed to registration. An application that encounters no objection or opposition could register within four months of filing.

Once registered, a trademark is valid for 10 years from the filing date and may be renewed indefinitely provided the appropriate form and fee is filed every 10 years.

Removal from register

Invalidation: A registration may be found invalid based on absolute or relative grounds and an action can be filed by any interested party at any time after registration.

If an earlier rights holder acquiesces in the use of a registered trademark for a continuous five-year period, it loses the right to file an invalidation action, unless the later trademark was registered in bad faith.

A declaration of invalidity has the effect that the registration is deemed never to have been in force in respect of all or some of the goods or services that it covers.

Revocation: The grounds for revocation are:

  • non-use – where a mark has not been put to genuine use in the United Kingdom within five years of registration, or if such use has been suspended for an uninterrupted five-year period, and there are no proper reasons for non-use;

  • generic – where a mark has become the common name in the trade for the goods or services for which it is registered as a consequence of acts or inactivity of the rights holder; and

  • deceptive – where a mark is liable to mislead the public as to its nature, quality or geographical origin for the goods or services for which it is registered as a consequence of acts or inactivity of the rights holder.

An order for revocation means that the rights of the proprietor are deemed to have ceased as from the date of the application for revocation or an earlier date if the grounds for revocation existed at that date.

Surrender: A registration can be surrendered either partially or entirely. Surrender takes effect from the date of publication in the Trademarks Journal.

Enforcement

It is possible to bring an infringement or passing off action in respect of unauthorised use of a registered or unregistered mark.

Pre-action steps

Prior to bringing an infringement or passing off claim, the parties are expected to make reasonable efforts to settle the dispute, otherwise this may affect the available remedies.

It is recommended that a cease and desist letter is issued to the infringer, but consideration must be given to unjustified threats. The law surrounding unjustified threats was recently amended in the Intellectual Property (Unjustified Threats) Act 2017.

A threat will be justified if the communication is made for a permitted purpose, the information relating to the threat must be necessary for that purpose and the person making the communication must reasonably believe that the information is true. In terms of permitted purposes, these are listed as:

  • giving notice that an IP right exists;

  • discovering the identity of a primary actor or whether primary acts of infringement have taken place; and

  • making a person aware of an IP right where it is relevant to any proceedings.

The court is also given discretion to treat any other purpose as a permitted purpose in the interests of justice.

A threat is also justified if it is shown that the act to which the threat relates was or would be infringing. Accordingly, if a right is held to be invalid, the threat cannot be justified.

Unregistered trademark rights continue to be unaffected by the Intellectual Property (Unjustified Threats) Act 2017.

Civil proceedings

Both infringement and passing off actions can be brought in the High Court (Chancery Division), which includes the separate IP Enterprise Court, as well as in a designated county court.

The remedies available depend on the court and route chosen. The IP Enterprise Court was designed to handle lower value and less complex actions than the High Court and can therefore be cheaper and quicker. This is to ensure that small and medium-sized enterprises are not deterred by the cost of litigation.

A successful rights holder may be able to obtain an order for:

  • an interim injunction (the IP Enterprise Court smalls claims track does not allow for interim remedies);

  • a permanent injunction;

  • delivery up or destruction of infringing goods;

  • removal of marks from infringing goods;

  • an account of profits or damages; and

  • payment of legal costs.

With regard to an interim injunction, it is recommended that the rights holder act immediately on learning of the infringement or threat of infringement, as delay may prejudice its position. An interim injunction is a discretionary remedy and an applicant must show that it would suffer irreparable harm if an injunction were not granted until the end of a full trial.

Criminal proceedings

Section 92 of the Trademarks Act lists unauthorised uses of a trademark which constitute a criminal offence, including:

  • applying to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trademark;

  • selling, distributing or possessing goods bearing a sign which has been applied and

  • making or possessing an article specifically designed or adapted for making copies of a sign identical to, or likely to be mistaken for, a registered trademark.

A person commits such an offence where acting with a view to gain for themselves or another, or with intent to cause loss to another, and without the consent of the registered trademark proprietor, where the goods are covered by the registered trademark and the trademark has a reputation in the United Kingdom, such that the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

If a person charged with an offence under Section 92 demonstrates that it believed on reasonable grounds that the use of the mark in the manner in which it was used, or was to be used, was not an infringement of the registered trademark, it has a valid defence.

A person guilty of an offence under Section 92 may be sentenced to up to six months’ imprisonment on summary conviction and up to 10 years on conviction on indictment, as well as a fine.

Company Names Tribunal

The Company Names Tribunal deals with complaints where a company name is registered for the primary purpose of preventing someone else with legitimate interest from registering it or demanding payment from them to release it.

Given its low costs, it is considered effective by rights holders.

Ownership changes and right transfers

As an object of property, a registered trademark can be transferred from one party to another. As well as a complete change or transfer, it is possible to partially assign or license a trademark in respect of some of the goods and services for which the mark is registered, as well as for use in a particular manner or locality.

While such changes and transfers must be made in writing and signed on behalf of the assignor or licensor, the assignee’s or licensee’s signature is not required (although it is recommended to avoid disputes). If a trademark is jointly owned, all owners must consent to assign or licence the trademark.

In order for a licensee to assert its statutory rights and remedies in relation to infringement, the licence must be recorded at the registry. Once recorded, unless stated otherwise within the terms of the licence, the licensee is entitled to call on the trademark proprietor to commence infringement proceedings in respect of any matter which affects its interests. If the trademark proprietor refuses or fails to do so within two months of being called on, the licensee may bring the proceedings in its own name as if it were the trademark owner.

Use of a trademark under licence is considered use sufficient to prevent revocation of that mark on the basis of non-use.

Related rights

Copyright and registered and unregistered designs can complement and overlap with trademark rights, particularly in the field of logo trademarks and three-dimensional trademarks. Further, these related rights can be relied on to oppose a trademark application.

For instance, copyright in artistic works (eg, logos) is automatic and valid for 70 years from the end of the calendar year in which the author dies. Copyright may exist before unregistered trademark rights are established.

It is also possible to protect new product get-up and designs which have ‘individual character’ in the United Kingdom. Unlike a trademark registration, a design registration does not have use requirements. A registered design can be renewed every five years, up to a total period of 25 years. Unregistered design rights protect designs for a period of 15 years from when they are created or for 10 years after the product is first sold, whichever is the earlier.

Online issues

Nominet, the ‘.uk’ domain name registry, operates the dispute resolution service for ‘.uk’ domains.

In order to succeed in a domain name complaint, the complainant (any legal or natural person) must show that the domain name complained of is an ‘abusive registration’. An abusive registration is a domain name which was registered (or acquired) or is being used in a manner which takes unfair advantage of or is unfairly detrimental to the complainant’s rights in respect of a name or mark which is identical or similar to the domain name.

A defended complaint filed under the dispute resolution service policy enters into a mediation stage, during which a Nominet mediator contacts both parties in an attempt to mediate a resolution. If mediation is unsuccessful, the complainant must pay a fee for a decision on the matter by a Nominet expert.

If the complainant succeeds, the domain name registration can be cancelled, suspended or transferred to the complainant.

Keltie LLP

Keltie LLP

1 London Bridge

London SE1 9BA

United Kingdom

Tel+44 20 7329 8888

Fax+44 20 7329 1111

Web www.keltie.com

Alistair Gay

Alistair Gay
Partner
[email protected]

Alistair Gay is a chartered trademark attorney, European trademark attorney and co-head of Keltie’s trademark practice. In addition to advising on general trademark clearance, prosecution and registration matters, Mr Gay has considerable experience in dealing with enforcement issues and the management of international trademark portfolios. He routinely prepares UK and overseas clearance and filing strategies for clients and has handled many due diligence search projects in support of corporate mergers and acquisitions. Much of his work involves advising clients on the law of infringement, representing clients in settlement negotiations and working with solicitors and overseas counsel in litigation matters.

Charlotte Wilding

Charlotte Wilding
Senior associate
[email protected]

Charlotte Wilding joined Keltie in 2008 and qualified in 2013, becoming a chartered trademark attorney and European trademark attorney. She received the Adrian Spencer Memorial Award for the candidate with highest mark in advanced UK trademark law and practice in 2012. Ms Wilding acts on behalf of clients in a broad range of industries – including cosmetics, beauty, entertainment, finance, insurance, accounting and telecoms – in respect of trademark, design, copyright and domain name protection.