Registered Trade Marks

13 June 2017 Updated 14 Jan 2019 and 13 Jan 2021


Trade marks for the United Kingdom may be registered with the Intellectual Property Office ("IPO") under the provisions of the Trade Marks Act 1994. The Act implemented Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks  ("the Trade Marks Directive") which applied to the UK until 23:00 on 31 Fev 2020.   The Act is supplemented by the Trade Marks Rules 2008.

What is a Trade Mark?

A trade mark is defined by s.1 (1) of the Act as:

"any sign which is capable-
(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
(b) of distinguishing goods or services of one undertaking from those of other undertakings."

Specifically included in the definition are words (including personal names), designs, letters, numerals or the shape of goods or their packaging."

What can be registered?

With a number of exceptions, any sign that falls within the definition of a trade mark can be registered. The exceptions fall into two groups.  Those that are inherently objectionable such as marks that are devoid of distinctive character, offensive or are too similar to royal, national or other protected emblems. Those that are the same as, or similar to, marks that have already been registered or applied for which are used in relation to the same or similar goods or services.

Applications to register a Trade Mark

Applications to register marks may be made online or manually on prescribed forms in relation to specified goods or services. An application can also be made through the World Intellectual Property Organization pursuant to the Madrid Protocol.  It is advisable but not compulsory to instruct a trade mark attorney to file the application (see Jane Lambert  Can I apply for a Trade Mark by myself or must I instruct an Attorney? 31 May 2017 NIPC-Branding).

Examination

Each application to register a trade mark is examined by an official known as "an examiner," If the examiner objects to any aspect of the application, he or she will set out the objection in writing and give the applicant an opportunity to respond,  If the examiner considers that the objection cannot be overcome he or she may refuse the application.

Ex Parte Appeals

An applicant may appeal to the Registrar (or chief executive of the IPO) against any decision of the examiner. The Registrar appoints an official known as "a hearing officer" to hear and determine the appeal on his or her behalf.  I described the procedure in If the examiner says "no" - ex parte hearings in the Trade Marks Registry 10 Aug 2015 NIPC London.

Publication

If there is no objection by the examiner or if all objections are overcome, the IPO will publish the application in the Trade Marks Journal. Publication gives an opportunity to those who have already registered, or applied to register, the same or a similar mark in respect of the same or similar goods or services, to oppose the application. Those who could prevent the use of a mark by bringing a claim for passing off may also oppose the application.  Alternatively, those who object to an application can make representations to the Registrar without formally opposing it.

Opposition

Unless the parties can come to terms, oppositions are determined by a hearing officer appointed by the Registrar. I discussed the procedure in Oppositions in the IPO's Trade Marks Registry 12 Aug 2015 NIPC London.

Registration

If there is no opposition, or any opposition is disposed of, the application will be granted. The mark will be registered in the register of trade with effect from the date of filing. Notice of registration will be published. The applicant (henceforth known as "the registered proprietor") will receive a certificate of registration.  Upon registration, the registered proprietor acquires exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his or her consent.

Infringement

A trade mark is infringed by using in the course of trade:

• a sign which is identical with the registered trade mark in relation to goods or services which are identical with those for which it is registered; or
• a sign where because:
  - the sign is identical with the registered trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
  - the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
  there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the registered trade mark; or
• in relation to goods or services a sign which is identical with or similar to the registered trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Enforcement

A registered proprietor may sue an alleged infringer in the civil courts of England and Wales, Scotland or Northern Ireland for an injunction to restrain further infringement and damages or an account of profits and other relief in respect of past infringement. In England and Wales, such proceedings may be brought in the Chancery Division of the High Court of England including the Intellectual Property Enterprise Court ("IPEC") or the County Court. Claims worth £10,000 or less may be brought in the IPEC Small Claims Track. Some trade mark infringements are criminal offences which may be prosecuted in the Crown Court or magistrates courts.

Invalidity

A court or the Registrar may declare a registration invalid on any of the grounds upon which an application to register a trade mark could have been opposed if it appears that the mark should never have been registered. An application for a declaration of invalidity may be raised by a defendant as a counterclaim in infringement proceedings or in an application to the Registrar.  Invalidity proceedings before the Registrar are determined by a hearing officer and are similar to opposition proceedings.

Revocation

The court or Registrar may revoke the registration of a trade mark if ts not used, ceases to be used, ceases to be distinctive or becomes deceptive.  An application for the revocation of a mark may be raised by way of counterclaim in infringement proceedings or in an application to the Registrar. Revocation proceedings before the Registrar are determined by a hearing officer.

Further Information

Further information on registered trade marks can be obtained from Jane Lambert on 020 7404 5252 during office hours.