Trade and Service Marks

– Trade Marks Act 1974.
– Trade Marks (Modification and Amendment) Act 1991.
– Trade Marks and Service Marks Regulations 1993.

Membership in International Conventions

– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille) – in effect by extension from the U.K.

Filing

Application: there is only one type of application. The law does allow the Registrar to give consideration to any registration in the U.K. and register such a mark on the same basis as the U.K. registration. This provision was extended to include EU trademark registrations in 2017. This provision will almost certainly cease as soon as the U.K. leaves the EU unless there is an enabling provision. This provision is permissory and the Registrar is not required to register any U.K. or EU mark. Re-registration of U.K. and EU marks is not provided for otherwise.  

Applicant: the first person to file a trademark is entitled to registration. 

Types of marks: a trademark may be registered in respect of goods, services or both.

Not registrable: (a) trademarks containing certain signs; (b) trademarks that cannot be represented graphically; (c) trademarks not distinguishing applicant’s goods or services; (d) trademarks that are scandalous or whose use is contrary to law; (e) trademarks likely to deceive or cause confusion; (f) identical trademarks.

Defensive trademark: available.

Geographical indications: no provision.

Priority: Convention priority cannot be claimed.

Classification: based on the Nice Classification. 

Multiple class filings: not allowed.

Filing requirements for an application (to be sent to resident registered agent):
1. Authorization of agent without notarization or legalization;
2. 6 representations of the trademark;
3. List of goods or services, or both.

Electronic filing: not available. 

Electronic signatures: are not accepted.

Examination and Granting

Examination: as to prior trademark rights and distinctiveness. 

Disclaimers: available. 

Letters of consent: are accepted.

Opposition: possible within two months from the date of publication of the application.

Duration: seven years from registration.

Renewal: for periods of fourteen years. Application is permitted up to three months before expiration. Grace period: six months after expiration with the payment of a restoration fee. Any registered trademark which expires remains on the Register for a period of twelve months after expiration for examination purposes.

Register: divided into Part A and Part B based on distinctiveness. 

Rights of prior user: provided for. 

Use: a registered trademark may be cancelled on the grounds either (a) that the trademark was registered without any bona fide intention on the part of the applicant to use the trademark in relation to the goods up to one month before the date of the cancellation request; or (b) that up to one month before the date of the cancellation request a continuous period of five years or longer has elapsed during which the registered trademark was not used.

Assignment: a pending application or a registered trademark may be assigned in accordance with the Act.

License: registered users or licensees are provided for.

Infringement: subject to legal action; relief by way of injunction and damages or an account of profits.