UK: Ensuring trade mark protection post Brexit
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian 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.


Rebecca Dobson

Chapman IPKings Park House22 Kings Park RoadSouthampton SO15 2ATUnited KingdomTel: +44 1962 600 500

more from across site and ros bottom lb

More from across our site

Lippes Mathias has hired three partners and a counsel from Offit Kurman
External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
Gift this article