	Trademarks
	United Kingdom
	(Europe) Firm Baker Botts L.L.P. Contributors Neil Coulson Updated 22 Mar 2021
What is the system for trademark protection in your country?	The system for trademark protection in the United Kingdom includes: Registration Common law Coexisting rights under registration and common law.
To which international treaties does your country belong?	The United Kingdom belongs to the following international treaties: Paris Convention Madrid Protocol Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks Lisbon Agreement for the Protection of Appellations of Origin and their International Registration Trademark Law Treaty ("TLT") Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods Singapore Treaty on the Law of Trademarks
What are the benefits of registering a trademark in your country?	The benefits of registering a trademark in the United Kingdom include: It entitles the proprietor to bring an infringement action
Is it possible to obtain registration for the following types of marks under the registration system in your country?	Service marks Yes Defensive marks Yes Collective marks Yes, a collective mark represents that the goods or services of a member of an association which is the proprietor of the mark from those of other associations. Use must be governed by regulations that are examined, along with the mark itself, at the examination stage. The applicant must be an association and be capable of holding property. Certification marks Yes, a certification mark is a mark indicating that the goods and services in connection with which it is used are certified by the proprietor of the mark in respect of the origin of the material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. Use must be governed by regulations that are examined, along with the mark itself, at the examination stage. They are normally applied for by trade organizations and the applicant must have a legal personality. The applicant must carry out testing to ensure that the criteria for the certification are met by a user. Well-known marks Yes, the criteria are based on the World Intellectual Property Organization ("WIPO’s") Joint Recommendation on the Protection of Well-Known Marks (1999) but these are not rigidly applied (see Arnold J in Hotel Cipriani srl v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032. The WIPO criteria are: (i) the degree of knowledge or recognition of the mark in the relevant sector of the public; (ii) the duration, extent and geographical use of the mark; the duration, extent and geographical area of any promotion of the mark; the duration and geographical area, or applications for registration, of the mark to the extent that they reflect its use or recognition; (iv) the record of successful enforcement of rights in the mark; (v) the value associated with the mark. Series marks Yes, series marks are a number of trademarks that resemble each other as to their material particulars and differ only as a matter of non-distinctive character which would not affect the identity of the mark. The maximum number of marks in a series is 6. Marks in a different language or characters other than Roman characters Yes, marks may consist of words in languages other than English. Applications for marks in Welsh or Gaelic are treated the same as English for the purpose of distinctiveness. Non-English word marks that are likely to be recognized as descriptive of a characteristic of the goods or services will be objectionable. The more closely a non-English word resembles its English counterpart, the more likely it is to be rejected. Applications in the non-Roman script must be transliterated to understand their meaning. Non-traditional marks: Sound marks Yes, a sound mark application must be accompanied by an audio file (MP3 format, no more than 2 MB) reproducing the sound unless it can be represented accurately using musical notation. The application must be submitted electronically. If images are combined with the sound, the application must be submitted as a multimedia mark. Non-traditional marks: Smell marks Yes, in practice, smell marks are capable of registration. Smell marks must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In practice, though, it is difficult (according to the United Kingdom International Patent Office "UKIPO") to see how a smell mark can be represented in an acceptable format. For example, a written description or a sample or a specimen cannot replace the representation because a written description is not clear and a sample or specimen is not durable. The UKIPO follows the Courth Justice of the European Union ("CJEU") case of Sieckmann (C-273/00). Non-traditional marks: Position marksYes, these are referred to in United Kingdom practice as motion marks. The application must contain either a video file (MP4 format, not exceeding 8000Kbps) or a series of still images exhibiting the different positions. A description must accompany the still images and set out: (i) what the image depicts, (ii) the number of images involved in the complete movement, (iii) the sequential order of the images, and (iv) that there is a single sequence of movement. Where this is a combination of images and sound, this should be filed as a multimedia mark. There is no requirement to submit a description if a video file is used. Non-traditional marks: Color marks (i.e. registration of a single color or a combination of colors, e.g. Cadbury's purple color) Yes, the protection is for the shade of color or, if more than one color, a systematic arrangement associating the colors in a predetermined and uniform way (the UKIPO follows Heidelberger Bauchemie GmbH (Case C-49/02). Marks can be represented by a written description accompanied, for example, by an internationally recognized color identification system. The UKIPO gives Pantone, Focoltone, Munsell Color or Toyo as examples. Where the marks consist of a color (s) applied to goods or their packaging, an appropriate description needs to be included. Non-traditional marks: Shape or three-dimensional marks Yes, the same requirements as a traditional trademark and a representation of the three-dimensional figure.
What are the documents and information required for filing a trademark application in your country?	Documents and information required to file a trademark application in the United Kingdom include: Name and address of the applicant Representation of the trademark Goods and services and the class(es) for which the trademark is to be registered
Are multi-class applications permitted in your country?	Yes, multi-class applications are permitted in the United Kingdom. There is no maximum number of classes prescribed for each application.
Is there substantive examination of trademarks?	Yes, there are substantive examinations of trademarks in the United Kingdom on the following grounds: Substantive grounds
What are the absolute grounds for refusal?	Absolute grounds for refusal of a trademark in the United Kingdom include: Mark has direct reference to the character or quality of the goods or services Mark is not distinctive
What are the relative grounds for refusal?	Relative grounds for refusal of a trademark in the United Kingdom include: There is a prior application for registration or registration for an identical or confusingly similar mark in relation to the same goods or services as the subject mark There is a prior application for registration or registration for an identical or confusingly similar mark in relation to similar goods or services (although in a different class) as the subject mark Well-known mark: There is a well-known mark that is identical or so nearly resembling the subject mark for the same goods or services as the subject mark Well-known mark: There is an earlier registered mark that is well-known for different goods or services and the use of the subject mark would indicate a connection between goods or services covered by the subject mark with the proprietor of the well-known mark.
What is the time period from application to registration for a straightforward trademark application in your country?	The time period from application to registration in the United Kingdom is between 6-12 months.
Is late renewal of a trademark registration permissible in your country?	Yes, late renewal of trademark registration is permissible in the United Kingdom. There is a six-month grace period after the trademark has expired.
Does evidence of use need to be submitted to the trademark office at any time in order to maintain an application for registration or a registration of a trademark in your country?	No, evidence of use does not need to be submitted to the trademark office in order to maintain an application for registration or registration of a trademark in the United Kingdom.
Are trademark licensees required to record themselves with the Registrar?	No, trademark licensees are not required to record themselves with the Registrar in the United Kingdom, however, it is recommended.
What are the available enforcement methods in your country?	Available enforcement methods in the United Kingdom include: Civil enforcement Infringement action Passing off Criminal enforcement Border or other administrative enforcement measures
Are there any peculiarities not mentioned above in the system of protection for trademarks in your country of which it is important for clients to be aware?	In the United Kingdom, there is no examination on relative grounds and the opposition period lasts only two months, extendable on request (no fee) for a further month.

Trademarks

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What is the system for trademark protection in your country?

The system for trademark protection in the United Kingdom includes:

Registration
Common law
Coexisting rights under registration and common law.

To which international treaties does your country belong?

The United Kingdom belongs to the following international treaties:

Paris Convention
Madrid Protocol
Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks
Lisbon Agreement for the Protection of Appellations of Origin and their International Registration
Trademark Law Treaty ("TLT")
Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods
Singapore Treaty on the Law of Trademarks

What are the benefits of registering a trademark in your country?

The benefits of registering a trademark in the United Kingdom include:

It entitles the proprietor to bring an infringement action

Is it possible to obtain registration for the following types of marks under the registration system in your country?

Service marks

Yes

Defensive marks

Yes

Collective marks

Yes, a collective mark represents that the goods or services of a member of an association which is the proprietor of the mark from those of other associations. Use must be governed by regulations that are examined, along with the mark itself, at the examination stage. The applicant must be an association and be capable of holding property.

Certification marks

Yes, a certification mark is a mark indicating that the goods and services in connection with which it is used are certified by the proprietor of the mark in respect of the origin of the material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. Use must be governed by regulations that are examined, along with the mark itself, at the examination stage. They are normally applied for by trade organizations and the applicant must have a legal personality. The applicant must carry out testing to ensure that the criteria for the certification are met by a user.

Well-known marks

Yes, the criteria are based on the World Intellectual Property Organization ("WIPO’s") Joint Recommendation on the Protection of Well-Known Marks (1999) but these are not rigidly applied (see Arnold J in Hotel Cipriani srl v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032. The WIPO criteria are: (i) the degree of knowledge or recognition of the mark in the relevant sector of the public; (ii) the duration, extent and geographical use of the mark; the duration, extent and geographical area of any promotion of the mark; the duration and geographical area, or applications for registration, of the mark to the extent that they reflect its use or recognition; (iv) the record of successful enforcement of rights in the mark; (v) the value associated with the mark.

Series marks

Yes, series marks are a number of trademarks that resemble each other as to their material particulars and differ only as a matter of non-distinctive character which would not affect the identity of the mark. The maximum number of marks in a series is 6.

Marks in a different language or characters other than Roman characters

Yes, marks may consist of words in languages other than English. Applications for marks in Welsh or Gaelic are treated the same as English for the purpose of distinctiveness. Non-English word marks that are likely to be recognized as descriptive of a characteristic of the goods or services will be objectionable. The more closely a non-English word resembles its English counterpart, the more likely it is to be rejected. Applications in the non-Roman script must be transliterated to understand their meaning.

Non-traditional marks: Sound marks

Yes, a sound mark application must be accompanied by an audio file (MP3 format, no more than 2 MB) reproducing the sound unless it can be represented accurately using musical notation. The application must be submitted electronically. If images are combined with the sound, the application must be submitted as a multimedia mark.

Non-traditional marks: Smell marks

Yes, in practice, smell marks are capable of registration. Smell marks must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In practice, though, it is difficult (according to the United Kingdom International Patent Office "UKIPO") to see how a smell mark can be represented in an acceptable format. For example, a written description or a sample or a specimen cannot replace the representation because a written description is not clear and a sample or specimen is not durable. The UKIPO follows the Courth Justice of the European Union ("CJEU") case of Sieckmann (C-273/00).

Non-traditional marks: Position marksYes, these are referred to in United Kingdom practice as motion marks. The application must contain either a video file (MP4 format, not exceeding 8000Kbps) or a series of still images exhibiting the different positions. A description must accompany the still images and set out: (i) what the image depicts, (ii) the number of images involved in the complete movement, (iii) the sequential order of the images, and (iv) that there is a single sequence of movement. Where this is a combination of images and sound, this should be filed as a multimedia mark. There is no requirement to submit a description if a video file is used.

Non-traditional marks: Color marks (i.e. registration of a single color or a combination of colors, e.g. Cadbury's purple color)

Yes, the protection is for the shade of color or, if more than one color, a systematic arrangement associating the colors in a predetermined and uniform way (the UKIPO follows Heidelberger Bauchemie GmbH (Case C-49/02). Marks can be represented by a written description accompanied, for example, by an internationally recognized color identification system. The UKIPO gives Pantone, Focoltone, Munsell Color or Toyo as examples. Where the marks consist of a color (s) applied to goods or their packaging, an appropriate description needs to be included.

Non-traditional marks: Shape or three-dimensional marks

Yes, the same requirements as a traditional trademark and a representation of the three-dimensional figure.

What are the documents and information required for filing a trademark application in your country?

Documents and information required to file a trademark application in the United Kingdom include:

Name and address of the applicant
Representation of the trademark
Goods and services and the class(es) for which the trademark is to be registered

Are multi-class applications permitted in your country?

Yes, multi-class applications are permitted in the United Kingdom. There is no maximum number of classes prescribed for each application.

Is there substantive examination of trademarks?

Yes, there are substantive examinations of trademarks in the United Kingdom on the following grounds:

Substantive grounds

What are the absolute grounds for refusal?

Absolute grounds for refusal of a trademark in the United Kingdom include:

Mark has direct reference to the character or quality of the goods or services
Mark is not distinctive

What are the relative grounds for refusal?

Relative grounds for refusal of a trademark in the United Kingdom include:

There is a prior application for registration or registration for an identical or confusingly similar mark in relation to the same goods or services as the subject mark
There is a prior application for registration or registration for an identical or confusingly similar mark in relation to similar goods or services (although in a different class) as the subject mark
Well-known mark: There is a well-known mark that is identical or so nearly resembling the subject mark for the same goods or services as the subject mark
Well-known mark: There is an earlier registered mark that is well-known for different goods or services and the use of the subject mark would indicate a connection between goods or services covered by the subject mark with the proprietor of the well-known mark.

What is the time period from application to registration for a straightforward trademark application in your country?

The time period from application to registration in the United Kingdom is between 6-12 months.

Is late renewal of a trademark registration permissible in your country?

Yes, late renewal of trademark registration is permissible in the United Kingdom. There is a six-month grace period after the trademark has expired.

Does evidence of use need to be submitted to the trademark office at any time in order to maintain an application for registration or a registration of a trademark in your country?

No, evidence of use does not need to be submitted to the trademark office in order to maintain an application for registration or registration of a trademark in the United Kingdom.

Are trademark licensees required to record themselves with the Registrar?

No, trademark licensees are not required to record themselves with the Registrar in the United Kingdom, however, it is recommended.

What are the available enforcement methods in your country?

Available enforcement methods in the United Kingdom include:

Civil enforcement
- Infringement action
- Passing off
Criminal enforcement
Border or other administrative enforcement measures

Are there any peculiarities not mentioned above in the system of protection for trademarks in your country of which it is important for clients to be aware?

In the United Kingdom, there is no examination on relative grounds and the opposition period lasts only two months, extendable on request (no fee) for a further month.

Trademarks

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Trademarks

United Kingdom

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