As a business owner, you may seek to protect your trade mark in the United Kingdom (UK). Culturally, the UK has always had a significant ongoing relationship with Australia. This includes a strong economic and trade relationship. Recently, the UK formally left the European Union, raising numerous considerations for Australian business owners. Brand protection should also be at the forefront of these considerations. This is because trade mark protection in the European Union (EU) no longer extends to the UK. This article will outline what you need to know about filing a trade mark application in the UK.
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Implications of Brexit
As mentioned, the UK formally left the European Union in January 2020. All European Union trade marks registered as of 31 December 2020 were automatically cloned into a UK right. This means these trade marks obtained the same rights as a UK trade mark. The cloned UK trade marks maintain the same priority, filing, and renewal dates as their original EU counterpart.
The rules regarding legal representation and service address also changed due to Brexit. From January 2021, the UK Intellectual Property Office (UK IPO) updated its rules to exclude addresses of service outside the UK, the Channel Islands or Gibraltar in respect of a UK trade mark application. However, these changes will not apply to the cloned UK trade marks from the EU register until 2024.
If you have any questions regarding an EU trade mark registered before 2020, you should seek legal advice to better understand your rights and responsibilities.
Registering a Trade Mark in the UK
There are two ways to register a trade mark in the UK. You can either:
- file a direct national application with the UK IPO; or
- apply using the Madrid Protocol.
Direct Applications to the UK IPO
Prospective trade mark applicants can file trade mark applications directly with UKIPO. However, it is important to remember that UK trade mark rights only extend to England, Scotland, Wales, and Northern Ireland.
Madrid Protocol Applications
International trade mark applications can be filed via the Madrid Protocol system. The Madrid Protocol application offers broader coverage than a regional application, as prospective applicants can continue to designate various countries under their international registration.
Continue reading this article below the formCommon Law Rights
You can also acquire legal rights to trade marks in the UK under common law.
Business owners should generally make enquires in the marketplace and within their industry to ensure their proposed trade mark does not infringe on any existing rights.
‘Well-known’ Trade Marks
The UK Trade Marks Act 1994 (implementing the Paris Convention) protects ‘well-known’ trade marks in the UK without registration. The owner of a ‘well-known’ trade mark in the UK can restrain the use of a trade mark that is wholly or has an essential part that is identical or similar to the ‘well-known’ mark for identical or similar goods or services, where such use is likely to cause confusion.
Furthermore, the owners of the trade marks do not have to conduct business or have any other associated goodwill in the UK. However, the owners of the trade marks must either be UK nationals or domiciled in or having a real and effective commercial establishment in a member state of the Paris Convention.
It is important to remember that the UK does not have a formal register of well-known trade marks. To enforce the ‘well-known’ trade mark in the UK, extensive evidence must be submitted to establish your business’s reputation. Business owners should know what brands are ‘well-known’ in the UK marketplace to ensure they are not infringing on these additional rights.
Key Takeaways
Due to recent global trade developments, you should take extra steps to ensure your business complies with its current obligations. You should also familiarise yourself with your IP rights in the UK.
Whether you are considering filing a new trade mark in the UK or looking for advice on how to manage and enforce an existing trade mark in the UK, our experienced IP lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
The Madrid Protocol is an international registration system. It offers trade mark owners the possibility to protect their trade marks in multiple jurisdictions by filing a single application.
A well-known trade mark is one that is synonymous with the area of goods or services in which it is protected. Examples include Apple or Nike. The owners of these marks can restrict others from using similar or identical marks in the same trade areas.
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