Update: Effects of Brexit on Trademark Law

What are the recommendations for trademark owners following the Brexit vote?

The UK has yet to implement its withdrawal from the EU. When it starts the process, the EU treaties will cease to apply to the UK two years after the UK’s notification of withdrawal (potentially earlier, if an agreement is finalised before, but this currently seems unlikely).

If an agreement is not reached, then there is a mechanism for a further 2-year negotiation period to be agreed. Every member state of the EU would have to agree to this and the likelihood of obtaining an extension seems slight.

Recommendations

• Conduct a review your Trade Mark portfolio.

• If the UK is an important jurisdiction to you and you have an EU registration only, then we recommend taking pro-active action and filing a UK Trade Mark now to secure rights here. This will give time for the application to be processed and any objections addressed ahead of the UK exiting the EU.

• If you are trading in member states of the EU other than the UK and do not currently have an EU registration, consider an EU filing to cover the other 27 member states now.

• If you have agreements that relate to your trademarks in the UK or EU then these should be reviewed to determine the effect of Brexit (for example in relation to governing law, jurisdiction where disputes would be addressed, definition of territories, the trademarks covered).

• Licenses also need to be reviewed.

What will happen to existing EU Trade Mark registrations?

It will be some time before the precise answer is known and there are various options that could be implemented. However, if an agreement is not reached before the end of the negotiating period with the EU, there is a risk that the UK element of EU registrations to cease to have effect.

For the time being EU registrations continue to have effect with regard to the UK.

Will there be transitional provisions for my existing rights?

It is thought that transitional provisions will be put in place to allow for e.g. conversion, or transformation of EU Trade Marks back to the UK, but at this stage there are no guarantees. This may take the form of existing conversion procedures following opposition whereby an applicant may request conversion into national filings for those countries where there is no objection. For those countries, the conversion system currently allows the national to take the same date as the EU application.

If conversion is allowed, there are fees payable to the EU Intellectual Property Office (EUIPO) as well as national filing fees to be paid. The national office examines the application and it is again open to opposition, proceeding to registration if no objections are encountered.

It is hoped that any conversion post Brexit would operate along the same lines, although it raises the question of what will happen if there are earlier competing rights on the register, or if rights have been acquired since the EU mark was filed.

EU Trade Mark Registrations with UK Seniority claims

When Trade Mark owners have an earlier Trade Mark registered nationally in an EU member state and then file for an EU Trade Mark, they can claim seniority from the national registration. The effect of a seniority claim is that the owner of the earlier national registration can allow it to lapse and the mark is deemed to continue to have the same rights as if the earlier trade mark had continued to be registered.

As this provision is under the EU Regulation, however, if that ceases to have effect in the UK, and the owner of the Trade Mark has allowed the earlier UK registration to lapse, whether a seniority claim can still be relied upon remains to be seen.

Implications of no longer being part of an EU unitary Trade Mark right

EU Trade Marks are unitary in nature and, accordingly, use in one member state of the EU is currently deemed sufficient to save a registration from any attack on the grounds of non-use. As such, use of a Trade Mark in the UK once the UK has left the EU, will no longer be likely to be taken into account when considering the use position for existing EU Trade Mark registrations.

Effect of prior rights if conversion to UK allowed (and seniority claims no longer valid/enforceable)

When an application is examined in the UK, the examiner does not have the power to refuse an application, although he will alert the owners of earlier national rights of the later-filed application if the Trade Mark is considered confusingly similar.

Should earlier national rights be an issue, consideration can be given as to whether they are vulnerable to cancellation, purchase from the Trade Mark owner, or a negotiated coexistence.

Effect on International Registrations relying on EU Trade Marks as the base registration

International Registrations are dependent on their base registrations for the first five years. Accordingly, if anything happens to the base registration, the International Registration is at risk of falling away.

It is not yet known whether there will be a mechanism for maintaining the status quo with regard to EU base registrations still within the five year dependency period, i.e. whether they will still be deemed to include the UK.

If the real and effective business linked to an EU mark is based solely in the UK, then there are implications for International Marks if the UK portion of the mark ceases to exist.

Trademark advice and information

What is a trademark?

The UK Intellectual Property Office defines trademarks as the "sign which can distinguish your goods and services from those of your competitors". In short – it is likely to be your most valuable asset and is what attracts customers to buy from you.

Once registered this trademark can be used in marketing a product or service ensuring it cannot be mimicked. Read more

Why should I register a trademark?

Simply put, if you don't register your trade mark then someone else can. This immediately puts your business at risk and any product or service development you are undertaking. Securing a registered trademark protects your brand by allowing you the tools to prevent someone using similar signs / trademarks and riding off the back of your business. If you do not protect your trademark by registering it then you may find you are legally prevented from expanding your business. Read more

How do I register a trademark in the UK and EU? Please explain the process.

Trademark Eagle can take you through this process with 4 easy online trademark registration steps. By registering your trade mark online with us we will ensure that your application is filed at the relevant Registry. This will show the trademark exactly as it is to be registered. Your application will provide details of the goods and services to be protected, the name and address of who you want the trademark to be assigned to, and that the statutory fees have been paid. Read more

What are trademark classes?

Trademarks are categorised according to their products or services and there are in total 45 recognised trade mark classes, which include every possible product or service imaginable. Because of this, the trademark classes are extremely complex and because of the fast changing world we live in, they have to be continually updated and amended. Read more

What is the difference between UK and EU registration?

A UK Trademark registration protects your rights in England, Wales, Scotland and Northern Ireland and is ideal if you do not trade anywhere outside the UK. UK Trademarks are registered on a first come first served basis.

A Community Trademark protects your rights in the 28 member countries of the EU, making the Community Trademark the mark of choice for many businesses who currently trade abroad, or who plan to expand into Europe, or for those with an exit strategy in mind. Read more

What is an Expert Trademark Review?

Trademark Eagle can conduct your searches for you!

Trademark Eagle can provide heavily discounted Specialist Trademark Advice to assess the success of an application to register your trademark. Our Expert Trademark Review costs only £50.00 (excl. VAT), for up to three Classes. The review is built into most trademark applications.

However, if you’re unsure about whether to commit to full registration costs, you can purchase an Expert Trademark Review on its own. We advise this service when you are not sure whether a mark is clear for usage, or on each trademark when you have multiple names to choose from. Read more

Trademarking a Logo

There is of course a significant difference between registering a trademark logo and protecting a patent for a technical process/application. Both of course have great value to the business but IP expert Trevor Baylis tells entrepreneurs with limited funds, that protecting the brand is by the far the best option. Read more

What is the difference between trademark and copyright?

While copyright and trademarks are both forms of intellectual property, they have very different legal functions.

Copyright grants the creator of an original work specific rights in relation to its use and distribution. These rights are granted automatically in the UK, and do not require registration. They apply to such items as literary, artistic, musical and dramatic works, and exist for only a limited time.

A trademark, on the other hand, is used to identify products or organisations, and usually takes the form of a logo or brand name. It therefore distinguishes a particular source of goods and services from the goods and services of others, and allows trademark owners to take action against anyone using their brand without permission. These rights are not granted automatically, but instead require proactive protection. Trademark registration is therefore essential to anyone seeking to legally protect their brand.

How do Amazon and eBay protect the rights of trademark owners?

Amazon

Amazon users are encouraged to report any suspected infringements as early as possible. Trademark owners and their agents can notify Amazon of alleged violations through the form provided on this page:

https://www.amazon.co.uk/gp/help/reports/infringement

The page also links to forms though which other parties (i.e. buyers and sellers who do not own the trademark rights) can report potentially inappropriate listings. If a user is judged to be infringing on someone else’s trademark rights, then Amazon will remove the item.

eBay

Like Amazon, eBay prohibits members from listing items carrying marks not approved of by the trademark owner. For this reason, trademark holders are able to request the ending of a listing through the site’s Verified Rights Owner (VeRO) programme:

http://pages.ebay.co.uk/help/tp/vero-rights-owner.html

Users also have the ability to report violations using the “Report Item” button, which can be found on every listings page of the website. If a claim of trademark violation is made against a listing, then eBay will verify this information and the item may be removed. Further information is available at the eBay seller centre: 

http://sellercentre.ebay.co.uk/trademark-and-domain-name-basics

 

While Amazon and eBay can remove items from their websites - as well as suspend users on a temporary or permanent basis - please note that neither site will be able to provide legal assistance or advice on the matter. Trademark registration is likely to be a great advantage in asserting your trade mark rights online. For further consultation, please contact a reputable trademark registration service such as Trademark Eagle.

How does Trademark Law work with AdWords?

The question many clients ask is whether they or their competitors are infringing trademark law, when they are using it as part of their ‘keywords’ in their Google AdWords strategy. Read more

How do Amazon and eBay protect the rights of trademark owners?

Amazon

Amazon users are encouraged to report any suspected infringements as early as possible. Trademark owners and their agents can notify Amazon of alleged violations through the form provided on this page:

https://www.amazon.co.uk/gp/help/reports/infringement

The page also links to forms though which other parties (i.e. buyers and sellers who do not own the trademark rights) can report potentially inappropriate listings. If a user is judged to be infringing on someone else’s trademark rights, then Amazon will remove the item.

eBay

Like Amazon, eBay prohibits members from listing items carrying marks not approved of by the trademark owner. For this reason, trademark holders are able to request the ending of a listing through the site’s Verified Rights Owner (VeRO) programme:

http://pages.ebay.co.uk/help/tp/vero-rights-owner.html

Users also have the ability to report violations using the “Report Item” button, which can be found on every listings page of the website. If a claim of trademark violation is made against a listing, then eBay will verify this information and the item may be removed. Further information is available at the eBay seller centre: 

http://sellercentre.ebay.co.uk/trademark-and-domain-name-basics

 

While Amazon and eBay can remove items from their websites - as well as suspend users on a temporary or permanent basis - please note that neither site will be able to provide legal assistance or advice on the matter. Trademark registration is likely to be a great advantage in asserting your trade mark rights online. For further consultation, please contact a reputable trademark registration service such as Trademark Eagle.

 
 

Trademark Requirements

Do I have to register a trademark?

No, registration is not compulsory - but it is extremely advisable. Enforcing your rights with a registered trademark is significantly easier than attempting any sort of legal action with an unregistered trademark. If you have not registered your trade mark, then action against a third party who uses it without your permission is both costly and extremely difficult to argue. Registering a trademark can cost less than £500, and carry a significant reward when the risks of being copied or superseded are considered.

Is a registered domain name as good as a trademark?

No, a domain name does not have precedence in law over trademark registration. It is possible for companies to be forced into surrendering their web domains if they have not decided to protect their brand through trademark registration. Domain name companies do not check trademark rights before they are issued. If you have registered your trademark then you effectively have a monopoly on that brand in the trade mark classes you have secured.

If you discover a domain name on the internet which you consider excessively close to your own trademark, then you may wish to take advantage of the World Intellectual Property Organisation’s Arbitration and Mediation Centre. If you can prove that the infringer intended to either profit from or damage the reputation of your mark, then WIPO may be able to cancel the offending domain name.

Am I protected because my business is registered at Companies House?

Once again, as in the answer above, there are no short cuts when you register a trademark. It has to be registered; having a company name does not mean your brand is secured. While it is easy to get lulled into a false sense of security by the fact that Companies House does not allow people to register a company with a name matching one on its database, it is important to note that they do not deal in intellectual property protection. Registration with the agency provides neither trademark protection nor rights.

Some companies have had to change their company name because they did not take the necessary care, preparation and trademark protection before registering a trademark at Companies House. Please note Companies House do not make any Trademark right checks before accepting your company name, and that anyone with a trademark will have precedence.

Can all trademarks be registered?

No, not every trademark registered is permissible. A trademark has to be distinctive and non-descriptive to pass the registration process, and so words that are commonly used in the trade may not be registerable. Descriptive words or phrases like "sports science", or "bananas" would not be acceptable when used in the contexts of sports equipment and fruits respectively. Yet it is a misconception that ordinary words like these can never be registered as trade marks. Such trade mark restrictions no longer apply where the words have no meaning in the specific industry sector. For example, the word "banana" would pass the distinctive and non-descriptive test for website design services e.g. Banana Designs.

Can two businesses own the same trade mark?

Yes this is possible if the two businesses are providing different goods/services. For example Penguiny Accountants can operate alongside Penguiny Fruit Traders as long as there is no overlap. This highlights how important it is to register your trade mark in the right classes. Trademark Eagle allows you to undertake this process online, but then checks applications to ensure that no classes are missed.

Can existing words be used in registered trademarks?

Yes they can, but there a number of pitfalls to look out for. The most common of these is the use of descriptive words - if your word simply describes the goods/services which you provide then it is unlikely to be accepted e.g. 'Vacuum cleaner'. The words must be easily distinguished from other business and cannot sound or look the same as an existing registered brand e.g. Amazhone or Amason. When registering a trademark it is also important to ensure that the words cannot be deemed offensive, in support of illegal activity, or liable to mislead the public.

 
 

Get to know the Trademark registration process

How long will it take for my trademark to become approved once I register online?

The time it takes to register a trademark varies depending upon whether objections are raised. A straightforward trade mark application takes approximately three to five months to register in the UK. An uncomplicated European Union Trademark application typically takes between six and nine months.

Why is my trademark advertised by the UK Registry?

This is part of the trademark registration process. It is a statutory requirement allowing interested third parties to become aware of your trademark and potentially oppose its registration. The trademark will be advertised for up to two months, although other businesses may request that this is extended to three months to allow them time to review the trademark registration.

What do I do if someone is objecting to my trademark?

There are strict deadlines in the registration process that cannot be missed, so any objection needs to be responded to promptly and swiftly. Trademark Eagle are able to support you in navigating through these the complexities of trademark law. Please contact us so we can advise you on how best to proceed.

If a trademark is opposed does this mean I can't use it?

Trademark oppositions are conducted in the Trade Marks Registry. While the outcome does not affect the actual use of a trademark, one would expect the decision to mirror a High Court decision. In order to legally prevent a trademark’s use, it is necessary to take action through the courts and not merely through the Trade Marks Registry.

What is the trademark opposition procedure?

Trademarks may receive objections with a view towards preventing their use. In most cases professional help is employed to assist the conflicting parties in coming to an amicable agreement outside of court. Again, Trademark Eagle have the attorneys to support you in these cases.

How long is the opposition process?

This can vary significantly. The registry will prefer parties to settle differences outside of the formal legal processes. However if the registry need to be employed to settle any trademark disputes the process can take up to two years.

Can costs be awarded in my favour in the opposition?

Yes. In trademark registration cases, the Registrar can make an award of costs, although these will not normally reflect your actual costs. The legal costs are awarded according to a scale, and will depend upon the stage of the trade mark opposition. Conversely, costs can also be awarded against you.

 
 

How do I use my trademark?

What happens if I'm already using my trademark?

The prior use of a trademark can provide some advantage in registration. It will mean that you are in possession of some unregistered trademark rights, permitting you to register the mark if there are conflicts on the trademark database. These common law rights are costly to enforce however, and are only successful when a significant and exclusive reputation has existed in that brand over a period of time. It will also need to be proven that the conflicting brand has been developed in an attempt to deceive the public or in order to damage your business.

How do I use the trademark abroad?

Ownership of UK or EU trademarks cannot grant permissions in any other countries. Trademark laws vary in each country, and some of the common law rights respected in the UK are not observed elsewhere - in some nations the first person to register a trademark owns it. Trademark Eagle attorneys have significant international experience, and can register your marks in any country you specify. Simply fill in the enquiry form to begin the process with us.

When do I use the TM by my Trademark?

This can be employed as soon as you register an application for a Trade mark; simply put the TM by every use of your Trademark where possible. Trademark Eagle also recommends that where appropriate the trademark is italicised, as this will serve notice to your competitors that a registration is pending.

When do I use the ® symbol by my Trademark?

As soon as your trademark application has gone through the whole registration process then the ® symbol can be adopted.

 

What Happens After Successful Registration?

Once I register a trademark, what rights will I have?

Registering a trademark grants you the rights to prevent unjust competition from your competitors. You have the ability to defend your mark against infringements, and clamp down on businesses which use your distinctive image in bad faith.

How long do I retain my trademark registration?

A trademark remains registered for a period of 10 years from the date it was filed. It is then due for renewal in 10 yearly periods. Online renewal must be conducted in the six months preceding or the six months following the date of expiry.

Is there anything else I should do once I have completed registering a trademark?

There are a number of things Trademark Eagle recommends:

  • Subscribe to a name-watching service – this will allow you to monitor if any business is seeking to gain an advantage by using your company trademark. Checks are made in registries and also for any activity on the internet and social media.
  • Regularly review how you are using the trade marks. Ensure that all the forms you employ are protected, particularly if you are expanding into new goods or services, or exporting to new countries.
  • Check the style of the mark. Sometimes companies can adapt their brand overtime, and it can develop to be significantly different from the original registration. In this instance, a new trademark may be required.
Someone's using my trademark, what do I need to do?

You need to take professional advice as soon as possible in order to benefit from all the courses of action that you may be entitled to. Do not delay in contacting us. Any time lapses between the infringement being noted and action being taken can potentially damage your case. Contact us on 0800 011 3229.

How do I prevent someone registering a trademark similar to mine?

Simply contact Trademark Eagle and we will begin the legal process by filing a trademark opposition for you.

How do I know if my trade mark opposition is successful?

There are various measures of success:

  • The business/individual may decide to withdraw its trademark application
  • An amicable agreement may be reached between the two parties, which may define the scope to how and where the trademark is used.
  • A commercial agreement which is mutually beneficial may be met
  • The Registrar may decide to prevent the registering of the trade mark, or restrict the class of goods/services in which the registered trademark can be operated
  • In some cases special conditions may be imposed on the trade mark by the Registrar, e.g. Limiting its rights to a geographical area

Please note, though, that the Registrar's decision surrounding the trademark does not necessarily mean the other party will cease from employing it. The decision may need to be enforced in the common law courts.