UK: Ensuring trade mark protection post Brexit

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23 November 2018

As the date of the UK's exit from the EU approaches, and given the proposed mirroring of registered EU rights on the UK Register but not pending applications, it is now particularly relevant to consider filing a UK application alongside any EU applications.

Filing a UK application requires the applicant name and address, any priority claim details, the mark to be filed (in jpeg form if a logo or device mark) and the specification of goods and/or services. No powers of attorney are required.

Applications are examined on absolute grounds. Applications are accepted for publication, providing they are sufficiently distinctive, not descriptive of the goods and/or services, not contrary to public policy or morality, do not deceive the public, do not consist exclusively of a shape resulting from the nature of the goods themselves, necessary for a technical result or add substantial value to the goods.

The date of publication triggers a two month period for any party to notify the applicant of an intention to oppose and/or file observations as to why the application should not be accepted. Filing of a Notice of Threatened Opposition at the UKIPO extends the opposition deadline by a further month, taking the total opposition period to three months. Should an opposition be filed, it is possible to enter into a cooling off period extending to a maximum of 18 months, subject to both parties' agreement. Alternatively, adversarial proceedings can be entered into where both parties are given a two month period to file submissions and evidence, with the applicant able to file reply submissions at request. A decision can either be taken on the papers or at a hearing, and this can be appealed to the appointed person as a final decision, or referred to the courts.

Assuming a straightforward process with no objections or oppositions, a UK registration can be achieved in as little as four months. It is also cost effective. The process can be completed for under £650 for one class where no objections or oppositions are raised. Equally, if an opposition is filed, the UKIPO offers a quick, effective and efficient route to resolution of the matter both in time and money. Official fees are low and award of costs set on a scale which is strictly adhered to.

The UK offers a quick, efficient, thorough and effective trade mark registration process which should be particularly relevant leading up to the UK's exit from the EU and well beyond.