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Reviewed by Alec Griffiths, IP Manager | 1 February 2024.

Trade marks 101

Trade marks 101

What is a trade mark?

A trade mark is defined in UK law as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.” (Section 1 of the Trade Marks Act 1994).

To break this down, a sign can consist of any word, design, colour, symbol, shape, colours, logos, smells, moving images, or a combination of any of these. It can be described as a badge of origin as it enables consumers to distinguish goods or services as coming from a particular source.

A UK trade mark is valid for 10 years, it is possible to obtain perpetual protection provided the renewal fees are paid every 10 years.

What are the benefits of registering your trade mark?

There are many benefits to registering your trade mark, such as:

  • Positioning your goods or services in the marketplace
  • Protecting your business identity and adding value to your brand
  • Obtain protection for your trademark in other countries
  • Gives you the exclusive right, preventing others from using your mark and riding on the back of your business
  • Allows you to take action against third parties or oppose any applications of attempted registration of identical marks, marks that are confusingly similar to your own or marks that may cause dilution and damage your trademarks reputation.

How long does it take to register a trade mark?

UK trade mark registration timeline

Registration can take between 4 and 6 months provided it is straightforward and there are no objections raised. Otherwise it can take up to 12 months or even longer.

All applications to be made at the UKIPO. There is a classification system comprising 45 classes of goods and services which need to be selected as part of the application process.

Some guidelines for registering new trade marks

Since the UK left the EU trade mark system in January 2021, any business wishing to register their trade mark in the UK will need to make a separate application in the UK as opposed to the previous system of having a single EUTM application which could cover the entire EU.

It’s important to ensure the mark is used correctly and only in genuine applications. Ensure that you keep the details up to date and pay renewal fees on time.

What is a trade mark infringement?

Having a registered UK trade mark protects the proprietor of the mark and gives them exclusive rights in the trade mark for goods and services the mark is registered for. It also means that the owner of the mark has the right to stop third parties in cases of infringement. Infringement can occur when:

  • There is double identity: where a third party has an identical sign to the registered trade mark in relation to identical goods or services.
  • There is a likelihood of confusion: where a third party uses an identical sign for similar goods and services of the registered trade mark, or a similar sign for identical goods and services of the registered trade mark, causing a likelihood of confusion as to the origin of the mark and goods and services.
  • There is damage to the reputation and unfair advantage: where a third party uses an identical or similar sign on goods or services which are not similar, and its use is detrimental to the repute of the registered trade mark or has taken unfair advantage of it.

How to renew a trade mark in the UK?

It is possible for a trade mark to obtain perpetual protection provided the renewal fees are paid every 10 years. It is important to keep track of renewal dates – a trade mark can be renewed up to 6 months before the renewal date. Trade marks can be renewed online or by post within this window. It is possible to reduce the number of classes each time you renew. If the renewal date is missed, trade marks can be renewed up to 6 months afterward, which is known as a late renewal with an additional fee on top of the renewal fee.

If the renewal window is completely missed, the UK Intellectual Property Office will remove the trade mark from the register. It may be possible to restore the trade mark by post up to a year after the renewal date along with the appropriate fee and an explanation to the UK Intellectual Property Office as to why the trade mark failed to renew on time. It must be proved that a genuine error has caused the lapse of the trade mark and failure to renew was unintentional. The UK Intellectual Property Office must be satisfied with this response to restore the trade mark.

If the trade mark proprietor decides not to renew or restore the trade mark, registration will lapse. However, the trader may benefit from “goodwill” in relation to their goods and services and the reputation they have built or common law “passing off” rights.

What does “passing off” mean in common law?

Unlike trade mark infringement which applies to registered trade marks, passing off applies to protect unregistered marks and rights associated with their business. It aims to protect a trader’s “goodwill” in relation to their goods and services and the reputation they have built.

Although the UK recognises unregistered rights, not all countries do, and no registration can mean you may have little to no rights at all.

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