Trademark protection is a fundamental part of IP planning for businesses entering overseas markets.
The UK, in particular, is one of the centers of global business, and is regarded as an attractive market for Korean companies to expand their brand and expand their business. When you register a trademark in the UK, you will have exclusive rights throughout the UK and you will be able to legally respond to the unauthorized use of third parties.
In this article, we’ll show you the key points you need to know in practice, from the UK trademark registration process to the review criteria to the opposition system.
What can't be registered as a trademark in the UK?
Under the UK Trademark Act, trademarks must have distinctiveness to identify the origin of a product or service. Therefore, any mark that lacks distinctiveness or is contrary to the public interest may be rejected.
The reasons for the rejection are as follows:
- Describe the characteristics of the product or service.
- Example: "Cotton" for cotton products
- The expression that misleads the consumer
- For example, using 'organic' for a product that is not organic.
- Commonly used names or expressions in the industry
- Simple shapes or forms without distinctiveness
- Insulting or obscene speech
- National flags, royal coats of arms, and other protected emblems
- Application for malicious purposes
For example, if the seller of an apple wants to register a simple apple as a trademark, it is likely that the form is perceived as representing the product itself and therefore lacks distinctiveness .
In addition, registration may be rejected even if it is the same or similar to an existing registration trademark and may cause confusion to the consumer. This can also be a problem, especially if the reputation of a well-known trademark is likely to be misused or undermined.
To reduce this risk, it is important to conduct a UK trademark search before filing to review the conflict with a earlier trademark.
What do I need to prepare for the UK trademark application?
The first thing to do before applying for a UK trademark is to determine what product or service to use the trademark for.
The UK adopts the Nice International Classification, with products classified as Class 1 to 34 and services as Class 35 to 45.
For example, clothing corresponds to class 25, but the scope of designated goods must be more specific depending on the actual business. Selecting the appropriate class is very important because trademark rights only occur for the products or services you specify when you apply.
In the UK in particular, it is preferable to focus on products and services that are actually planned for future use. Excessively wide coverage may cause problems in future disputes or the maintenance of rights.
We also recommend that you proceed with a trademark search process to ensure that the same or similar trademark is already registered prior to your application. The UK trademark search is not a legal requirement, but it is a very important step in practice to reduce the risk of rejection or opposition.
What information and documents do I need to apply for a UK trademark?
The UK trademark application is relatively simple and usually requires the following information:
- trademark image or mark information
- Name, address and nationality of the applicant.
- List of goods or services to use trademark
Separate proof of use or complex supporting documents are generally not required.
In the UK, there is a series application. This is based on the same trademark, but you can apply for multiple versions of the trademark with a single application that has only some differences, such as colors or fonts. Up to six different trademarks can be processed in one application, which in some cases can result in cost savings.
How does the UK trademark registration process work?
UK trademark applications are usually conducted in the following procedures:
① Trademark application
② Screening
3 trademark announcements
④ Registration
First, submit a trademark application to the UK Intellectual Property Office.
Upon receipt of the application, the UK Intellectual Property Office will review whether the trademark meets the registration requirements. Typically, an examination report is issued within two to three weeks of filing.
If examination identifies no outstanding objection, the application is published in the Trade Marks Journal. The initial opposition period is two months.
If no opposition is filed, the mark can proceed to registration after the opposition period ends, and the UK IPO issues a registration certificate.
In general, if there are no special problems, the duration of the UK trademark registration is about 4-6 months. The UK Intellectual Property Office usually tells you that you can register within about three to four months, but the actual period may vary depending on the response to examination or objection.
How does the UK trademark process work?
The UK trademark office will issue a examination report within two to three weeks of filing to review whether the trademark meets the legal registration requirements.
If the reason for the rejection is stated in the examination report, the applicant must generally resolve it within two months by submitting a comment or correction. If a proper response is not made to the deadline, the application may be rejected.
The UK IPO also searches for earlier marks. If a potentially conflicting mark is found, the applicant and, where applicable, the earlier right holder are notified; the earlier owner may choose to oppose.
The trademark will be published in the trademark journal for two months. During this time, a third party may file an opposition if it believes it is in conflict with its rights. The application period may be extended by an additional month if necessary.
When an opposition is filed, the process of negotiation between the parties, adjustment of the scope of the application, and submission of legal opinions will be carried out. On the other hand, if there is no opposition, we will proceed to the registration stage without any problems.
Practically, the opposition stage is considered one of the important steps in determining whether to register for the UK trademark.
The UK trademark application process is relatively simple, but the selection of designated goods and the prior trademark review process can lead to a rejection of registration or a dispute.
The scope of trademark protection depends on the specified goods and services, so the list should be drafted carefully under the Nice Classification.
Therefore, it is important to increase the possibility of registration through sufficient UK trademark searches and strategic designated goods design before filing. A review of patent attorneys can help reduce unnecessary costs and time.
UK trademark registration lasts for 10 years from the filing date and may be renewed for successive 10-year periods. Businesses entering the UK should consider protection in advance.
This article reflects the information available when it was published. Contact us to discuss your circumstances.