UK: Ensuring trade mark protection post Brexit
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

UK: Ensuring trade mark protection post Brexit

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.

dobson

Rebecca Dobson


Chapman IPKings Park House22 Kings Park RoadSouthampton SO15 2ATUnited KingdomTel: +44 1962 600 500  info@chapmanip.com  www.chapmanip.com

more from across site and ros bottom lb

More from across our site

INTA has postponed its planned Annual Meeting in Dubai, but the organisation should think carefully about whether it wants to go there at all
The firm has named its new managing director after its former Asia head resigned earlier this year
As law firms explore how best to support clients at the UPC, members of the UPCLA network believe they have found the best of both worlds
The Industry Patent Quality Charter hosted a conference in which it discussed the importance of granting high-quality patents
Julia Holden explains why, if she weren’t in IP, she would be directing and producing live English-language theatre
The impact of the recently agreed treaty may be modest at first but is likely to become more significant over time
Meet the esteemed judges who are assessing the first-ever Social Impact Awards
Lawyers debate whether the Supreme Court’s ruling helps maintain confidence in the trademark system
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
The group of lawyers, which includes seven IP partners, say they were impressed by ArentFox Schiff's wide-reaching experience
Gift this article