Introduction to UK Trademark Registration System
Intellectual Property Office of the United Kingdom (UKIPO)
Joined International Treaties for Trade Marks
Paris Convention; Madrid Protocol; Trademark Law Treaty; Singapore Treaty
Principle on Trade Mark Protection
the United Kingdom adopts mix-principles of “first-to-use” and “first-to-file” for the trademark protection, the Trade Marks Act of the UK protects both the registered trademarks and un-registered marks, but un-registered marks are protecting merely by the Common Law, which means "use" of the mark in a necessary condition to validate a mark in the UK.
If an used but un-registered mark is used by someone else, a court action against the infringement should be raised on the ground of “passing-off”. In such case, it is necessary to proof that the trademark is famous, and use of the infringe mark may cause confusion and/or misleading to the public.
If a registered trademark is used by someone else without authorization and/or license, the trademark owner can simply take an infringement action, and that the procedure is much simpler.
Kinds of Registrable Trade Marks
In the UK, the term “trade mark” includes word mark, device mark, 3D (shape) mark, color per se mark, their combination, sound mark, smell mark, and non-conventional trademarks, such as hologram mark and movement mark.
In addition, there are special trademarks are enacted and protected, such as “certification mark” and “collective trademark”.
Required Information and Documents
1. Applicant’s name, address, nationality / company’s registered country;
2. Specimen of the mark to be applied;
3. List of goods/services to be applied, and the class(es);
4. Translation & transliteration of foreign language in the mark; and
5. Priority document, if any.
Timeframe and Procedure for Application
If an application goes smoothly, the whole registration procedure takes about 3-4 months.
A trademark application in the UK usually takes about 2-4 weeks for examination, if there is no any refusal, it will then publish for 2 months for opposition purpose. If no opposition is filed, an electronic registration certificate will be issued within 1 month after the end of publication.
Duration and Renewal of Registration
A trade mark registration in the UK is valid for 10 years from the date of application, which can be renewed every 10 years, from 6 months before the renewal due date or up to 6 months after the date expires.
Cancellation System
If a registered trademark has not been actual used in the UK by the owner or with his consent, in relation to the goods or services for which it is registered, for a continuous period of at least 5 years, and there are no valid reasons for non-use, any third party can apply for revocation to cancel/remove the registration.
Relevant Information
UK Trademark Registration Costs and Procedures
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