Quick view: Introduction to trademarks (UK)

Introduction

This Quick view provides practical guidance for in-house counsel and private practitioners on navigating UK trademark law. It offers a concise overview of key concepts and procedures to help you protect and manage trademark rights effectively.

This Quick view covers:

What is a trademark?
Registered trademarks and their benefits
Trademark infringement - infringement, exceptions, and remedies
Challenging trademarks - opposition, invalidation and revocation proceedings
Using and dealing with trademarks - use, licensing, assignment and co-ownership
Unregistered rights - passing off and well-known trademarks

This Quick view can be used in conjunction with the following How-to guide: How to register a trademark.

1. What is a trademark?

A trademark is an indicator of the origin of goods and services. It helps the public to distinguish between the goods and services of one business and those of another.

The use of a trademark in relation to goods or services is not a guarantee that they originate from a particular company or individual – the same trademark may be used, for example, by the members of a corporate group or unconnected companies operating under formal licence agreements. There is, however, an owner (or co-owner) who is ultimately responsible for goods and services provided under the mark.

Identical and similar trademarks can also be used by entirely unrelated businesses where they are used in relation to distinctly different goods and services – for example, the use of POLO by Nestlé in relation to mints and Volkswagen in relation to cars.

As explained in Sections 2 and 3 below, some trademarks can be registered in the UK, giving the owner important exclusive rights. The UK also provides protection for unregistered trademarks, through a common law action in ‘passing off’ and rights in relation to ‘well-known trademarks’. For more information on passing off and well-known trademarks, see Section 6 below.

2. Registered trademarks and their benefits

2.1 Registration of trademarks

The law regarding registered trademarks is primarily set out in the Trade Marks Act 1994 (TMA).

To help prevent confusion arising from unrelated businesses using the same or similar trademarks, the UK provides for the registration of trademarks through two routes: directly through the UK’s Intellectual Property Office (UKIPO) or internationally via the World Intellectual Property Organization (WIPO) and its Madrid System for international trademarks.

The UKIPO also maintains an online database of trademark registrations and published applications to register trademarks, that have effect in the UK. The UK register can also be searched via TM view and WIPO’s Global Brand Database.

2.2 Types of trademark

To be registered as a trademark in the UK, in accordance with section 1 TMA, a mark has to be a sign that is capable of:

being represented in the register of trademarks in a manner that is clear and precise; and
distinguishing the goods and services of one undertaking from those of another.

Registered trademarks can take various forms, such as words, designs, letters, numbers, numerals, colours (single or in combination), sounds, or the shape of goods or their packaging.

Although registered trademarks can take a variety of forms, in practice, non-traditional trademarks – signs other than in the form of words or logos – can be much more difficult to register due to certain exclusions from registrability (see Section 2.5.1 below) and as they are considered less capable of distinguishing goods and services of one undertaking from another in the minds of consumers.

2.3 Collective and certification marks

Two additional types of trademark can also be registered in the UK – collective marks and certification marks.

Collective marks are trademarks that are used by businesses to indicate their membership of a trade association.
Certification marks are trademarks used to indicate that goods or services meet a defined standard or have a particular characteristic, defined by the owner.

In each case, it is necessary for the owner to have regulations governing the use of the marks and sanctions for their misuse.

2.4 Benefits of registering a trademark

A trademark registration confers benefits on its owner, for example, a registered trademark can be used:

to bring civil proceedings for infringement;
to provide the basis for criminal proceedings for infringement, typically concerning counterfeit goods;
to provide a defence to a claim for infringement of another trademark registered in the UK;
to provide grounds for opposing a third-party’s application to register a trademark or invalidate a later trademark registration;
as security;
to register with the UK’s Border Force via an Application for Action to help intercept infringing and counterfeit products as they enter or pass through the UK;
as grounds for objecting to a registered company’s name via the Companies Name Tribunal, a .uk domain name via Nominet, or other domain names used in the UK; and/or
as the basis for filing takedown notices with online retailers.

2.5 Requirements for registrability

2.5.1 Absolute grounds for refusal

An application to register a trademark can be refused on ‘absolute’ grounds or on ‘relative’ grounds (see Section 2.5.2 below).

The absolute grounds are set out in section 3 TMA, they fall into two categories.

The absolute grounds set out in section 3(1) concern whether:

the mark meets the requirements in section 1 TMA (capable of being represented in a clear and precise manner and distinguishing the goods and services of different undertakings);
the mark is devoid of distinctive character;
the mark consists exclusively of signs or indications:
- concerning a characteristic of goods or services (for example, the word ‘yellow’ in relation to lemons); or
- which have become customary in the English language or a relevant trade (for example, a generic term, such as ‘escalator’ or ‘elevator’).

An objection based solely on these grounds can, however, be overcome if a mark has acquired distinctiveness due to its use in the course of trade.

The absolute grounds for refusal in sections 3(2)-(6) TMA cannot be overcome by acquired distinctiveness. They concern:

signs exclusively consisting of the shape or another characteristic that results from the nature of the goods, that is necessary to obtain a technical result, or give substantial value to the goods;
signs that are contrary to public policy or accepted principles of morality or that would deceive the public (eg, as to the geographic origin of the goods)
signs whose use is otherwise prohibited by law (eg, due to passing off);
signs whose registration is prohibited by laws concerning designations of origin, geographical indications, traditional terms for wines and other specialities;
signs that conflict with earlier registered plant variety denominations;
signs that are or include a specially protected emblem (eg, the Royal arms of the UK’s monarchy); and
if or to the extent the application was made in ‘bad faith’.

The term ‘bad faith’ is not strictly defined in UK law, but includes, for example:

an application to register a trademark where the applicant’s sole intention was to prevent a third party from using or registering the trademark;
where the applicant did not have a genuine intention to use the trademark in relation to some or all of the goods and services covered by the registration; or
where an application was filed to try and avoid the UK’s rules on proving use of trademark registrations that are more than 5 years old (‘evergreening’).

For more information on the absolute grounds for refusal, see How-to guide: How to register a trademark.

2.5.2 Relative grounds for refusal

A trademark will also be refused registration (under section 5 TMA) if:

it is identical to an earlier registered trademark and the goods or services applied for are identical to those covered by the earlier registration;
it is identical or similar to an earlier registered trademark and is to be registered in relation to identical or similar goods or services, and as a result of the similarities there is a likelihood of confusion on the part of the public between the trademarks;
it is identical or similar to an earlier registered trademark, which has a reputation in the UK, and the use of the mark applied for would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trademark;
its use in the UK is liable to be prevented by any enactment or rule of law – such as the law of passing off, copyright law, or the law in relation to designs; or
where a representative of the proprietor of a trademark applies, without the proprietor’s consent, for the registration to be in the representative’s own name.

These relative grounds will, however, only be considered if: (1) they are raised by a third party in opposition proceedings or (2) the validity of a registered trademark is challenged by a third party in proceedings before the UKIPO or the UK courts (see Section 4).

2.6 Goods and services

Trademarks have to be registered in relation to particular goods and services, which are divided up into different classes using the Nice classification system. The more classes that are covered by a mark, the higher the UKIPO’s fees in relation to an application to register a trademark and any subsequent renewals.

The terms used to identify the goods and services must be reasonably specific – if a broad term is used it may be rejected outright by the UKIPO or the applicant may be required to prove that they are using or intend to use the trademark across a sufficiently wide range of goods or services to justify the use of a broad term.

For more information on identifying relevant goods and services, see How-to guide: How to register a trademark.

2.7 Duration and renewal

A trademark registration lasts for an initial period of 10 years from the date of registration and can be renewed indefinitely for further 10-year periods (section 42 TMA), subject to the payment of a renewal fee.

For further information and practical guidance on applying for, registering, and renewing trademarks in the UK, see How-to guide: How to register a trademark.

3. Trademark infringement – infringement, exceptions, and remedies

3.1 Acts of infringement

The owner of a registered trademark has certain exclusive rights, which can be infringed by use of an identical or similar trademark in the UK, in the course of trade, without the owner’s consent.

The main grounds for infringement (sections 10(1) to (3) TMA) establish that, a registered trademark is infringed if a person, without consent, uses in the course of trade:

a sign that is identical to the trademark, in relation to goods or services that are identical to those in respect of which the trademark is registered;
a sign that is identical or similar, in relation to goods or services that are identical or similar, where there exists a likelihood of confusion on the part of the public; or
a sign that is identical or similar, where the trademark has a reputation in the UK, and the use of the sign, without due cause, takes unfair advantage of or is detrimental to the distinctive character of the repute of the trademark.

The owner of a registered trademark also has a right, under section 10A TMA, to prevent others from bringing goods into the UK, without them being released into circulation in the UK if they bear a sign that is identical or essentially identical to the trademark and the goods are identical to goods covered by the registration.

This right allows a trademark owner to intercept goods in transit through the UK, although the right lapses if evidence is provided in relevant proceedings that they are not entitled to prevent the placing of the goods on the market in the country of final destination.

3.2 Limits on the effect of registered trademarks

3.2.1 Exceptions to infringement

A registered trademark is not infringed (section 11 TMA):

by use of a later registered trademark where the later registered trademark would not be declared invalid on certain grounds (eg, because the earlier mark had not been put to genuine use in the UK for a period of five years ending with the date of filing the application for the later mark or due to statutory acquiescence);
provided the use is in accordance with honest practices:
- use by an individual of their own name or address (this only applies to natural persons and not companies or other legal entities);
- the use of signs that are not distinctive or that concern characteristics of the goods or services (such as their quality, quantity, intended purpose, or geographic origin);
- the use of the trademark for the purpose of identifying or referring to the goods or services of the trademark owner; or
by the use in the course of trade in a particular locality of an earlier right that applies only in that locality (eg, if use of an earlier unregistered trademark in a locality in the UK is protected by the law of passing off).

3.2.2 Non-use

The owner of a trademark is only entitled to prohibit the use of a sign if the registration is not liable to be revoked on the basis of non-use (section 11A TMA). Therefore, the trademark:

must have been registered less than five years before the date the action for infringement is brought; or
must have been put to genuine use in the UK in relation to the goods and/or services concerned in the five years before the action is brought.

3.2.3 Exhaustion

A registered trademark is not infringed by the use of a trademark in relation to goods that have been put on the market in the UK or the European Economic Area (EEA) under that trademark by the trademark owner or with their consent, unless there are legitimate reasons for opposing further dealing in the goods (in particular where the condition of the goods has been changed or impaired) (section 12 TMA).

This limitation is referred to as ‘exhaustion’ and its purpose is to prevent trademark owners from using their trade mark rights to prevent the resale of goods that have been put on the market with their consent, except in limited circumstances.

3.3 Actions for infringement and remedies

Actions for trademark infringement can be brought in the UK courts by the owner of a registered trademark (section 14 TMA) or, in certain circumstances, an exclusive or non-exclusive licensee (see sections 30 and 31 TMA).

If the action is successful, the owner (and/or licensee) will ordinarily be entitled to remedies including:

damages or an account of profits in relation to the acts of infringement;
an injunction prohibiting the infringing acts;
an order requiring the offending sign to be erased or removed from any infringing goods, materials or articles in the defendant’s possession, custody or control, or if that is not reasonably practicable, the destruction of the infringing goods, materials, or articles (section 15 TMA);
an order requiring the delivery up of any infringing goods, materials or articles in the defendant’s possession, custody or control (section 16 TMA); and/or
an order requiring the publication by the defendants of the judgment of the court.

3.4 Criminal offences - Unauthorised use of a trademark in relation to goods

In addition to civil infringement, the use of a registered trademark in relation to goods without the consent of the owner can result in a criminal offence.

The offences are set out in section 92(1)-(3) TMA. Unlike civil infringement:

the person who carries out the prohibited acts must do so with a view to gain for themselves or another, or with intent to cause loss to another;
they are limited to the use of signs that are identical, or likely to be mistaken for, a registered trademark - similarity is not sufficient); and
the prohibited acts are not an offence unless the goods are goods covered by the registered trademark or the trademark has a reputation in the UK and the use of the sign takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the trademark.

Criminal offences in relation to trademarks are primarily the responsibility of UK local authorities’ trading standards services and the Police Intellectual Property Crime Unit. Prosecutions can be brought by the Crown Prosecution Service or by the owner of a registered trademark owners through a private prosecution.

4. Challenging trademarks - opposition, invalidation, and revocation proceedings

4.1 Opposition proceedings

An application to register a trademark can be opposed after details of the application have been published in the UK’s Trade Marks Journal and added to the register of trademarks. There is a two-month window in which third parties can file an opposition to the application with the UKIPO (section 38 TMA). The two-month window can be extended by one month if a notice of threatened opposition is filed within the two-month window.

An application can be opposed by anyone on the basis of the absolute grounds discussed in section 2.5.1 above. The owner of a relevant earlier trademark registration or other relevant right can also oppose an application (in relation to some or all of the goods and services covered) on the relative grounds discussed in section 2.5.2 above.

If an opposition is successful the application will be refused or, if it only relates to or is successful regarding some of the goods or services applied for, amended to remove the goods or services concerned.

4.2 Invalidation and revocation proceedings

After a trademark has been registered, it can be challenged by bringing invalidation or revocation proceedings. These can be brought either in the UKIPO or the UK courts. In practice, due to UKIPO proceedings typically being less expensive and quicker than court proceedings, the UKIPO option is normally preferred, unless the validity of a registered trademark is challenged as part of a counterclaim to infringement proceedings.

Invalidation proceedings allow a third party to try and remove a trademark from the register, in relation to all or some of the goods and services that it covers, as if the trademark had never been registered (section 47 TMA). They can be brought on the basis of either absolute or relative grounds (see Sections 2.5.1 and 2.5.2 above).

Revocation proceedings allow a third party to try and remove a trademark from the register, in relation to all or some of the goods or services covered by the mark, on the grounds that (section 46 TMA):

the trademark has not been used in the five-year period since it was registered, or any continuous five-year period following its registration, and there are no proper reasons for non-use;
the trademark has become the common name in the trade for goods or services for which it is registered, due to the action or inaction of the registered owner; or
because of the use of the trademark, either by the registered owner or by someone else with the owner’s consent, the mark is likely to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services on which it has been used.

5. Using and dealing with trademarks

5.1 Use as registered

It is important that following the registration of a trademark it is used in the form that it is registered. A trademark registration may be revoked if it has not been put to genuine use in the course of trade in the UK in the five years following its registration or any uninterrupted five-year period after that. In addition, if the owner of a registered trademark wants to rely on it in opposition, invalidation, or infringement proceedings, they may be required to prove that it has been used during a relevant five-year period.

5.2 Use of ™ and ®

The symbols ™ and ® can be used after a trademark to inform the public that it is a trademark.

Using these symbols appropriately can help to deter others from using an identical or similar sign as a trademark, prove use of a registered trademark (particularly, for example, where more than one registered trademark is used in combination in the branding for a product or service), and in establishing that an unregistered mark that might otherwise be refused registration has acquired distinctiveness.

The ® symbol should, however, only be used in relation to a registered trademark - it is an offence under section 95 TMA to falsely represent that a mark is registered as a trademark in the UK.

5.3 Licensing trademarks

A licence can be granted to a third party to use a registered trademark (section 28 TMA). The licence can be exclusive or non-exclusive. An exclusive licensee has the right to use a trademark to the exclusion of all other persons – including the registered proprietor.

A licence can be in respect of some or all of the goods or services covered by the registration and may be limited in relation to use of the trademark in a particular way or in a particular geographic location.

To be effective, a licence of a registered trademark has to be (1) in writing and (2) signed by or on behalf of the licensor or where the licensor is a body corporate, by affixing its seal (except in Scotland).

5.4 Assigning trademarks

A registered trademark (or a trademark application) can be transferred by way of an assignment, testamentary disposition, or the operation of the law (section 24 TMA). It can also be the subject of a charge or security (section 24(5) TMA).

Ownership of a trademark can be transferred with or without the goodwill of a business that owns the registration. However, a contractual obligation to transfer a business is taken to include an obligation to transfer any registered trademark owned by the business, unless there is agreement to the contrary or it is otherwise clear that this presumption should not apply.

An assignment or other transmission can be in relation to some or all of the goods or services covered by the registration and may be limited to use of the trademark in a particular manner or a particular locality. Note, however, that this will result in co-ownership of the trademark (see section 4.5 below).

To be effective, the assignment has to be (i) in writing and (ii) signed by or on behalf of the assignor or a personal representative or if the assignor is a company, by affixing its seal (except in Scotland).

5.5 Co-ownership

A registered trademark can be owned by more than one person – either as a result of it being granted to two or more owners or due to the transfer of an interest in the trademark to another person. Subject to any agreement to the contrary, each co-owner is entitled to an equal undivided share in the registered mark (see section 23(1) TMA).

Co-ownership has several important consequences:

each co-owner is entitled, without the consent of the others, to do any act which would otherwise amount to an infringement (section 23(2) TMA).
One co-owner may not, without consent:
- grant a licence to use the trademark (section 23(4)(a) TMA); or
- assign or charge their share in the trademark (section 23(4)(b) TMA).
Infringement proceedings may be brought by a co-owner, but unless they have the leave of the court, they the others must be joined as a claimant or defendant (so they are all bound by the outcome, but the other co-owners do not have to actively participate (section 23(5) TMA).

As a result, it is generally preferable for registered trademarks not to be co-owned. If co-ownership is necessary, the co-owners should enter an agreement specifying, among other things, what they are and are not entitled to do with the mark, their rights in relation to licensing the mark and assigning or otherwise transferring their interest in the mark, and how any infringement, opposition, or invalidation proceedings will be handled.

5.6 Registering transactions

Certain transactions in relation to registered trademarks can be registered with the UKIPO by the owner of a registered trademark or someone else who is entitled to an interest in the mark or is affected by the transaction (section 25(1) TMA).

These include (section 25(2) TMA):

an assignment;
the grant of a licence;
the grant of any security interest;
the making by personal representatives of an assent in relation to a trademark; and
an order of a court or other authority transferring the registered trademark or an interest in it.

Until an application has been made to register a transaction (section 25(3) TMA):

the transaction is ineffective against a person who acquires a conflicting interest in or under the registered trademark and is not aware of the transaction; and
a person claiming to be a licensee does not have the protection of section 30 or 31 TMA, which give licensees certain rights and remedies in relation to infringement.

In addition, if a person becomes the owner or licensee of a registered trademark as a result of a registerable transaction, and the mark is infringed before the transaction is registered, in proceedings concerning the infringement, the court will not award them costs unless:

an application for registration of the transaction is made before the end of the period of six months from the date of the transaction; or
the court is satisfied that it was not practicable for an application to be made before the end of that period, and an application was made as soon as practicable after the end of the period (section 25(4) TMA).

As a result, it is important to register a registerable transaction shortly after it has taken place. The UKIPO’s forms and fees for registering transactions can be found here.

6. Unregistered rights – passing off and well-known trademarks

6.1 Passing off

Passing off is a common law tort that can be used to prevent others from using signs and other indicia that are associated with a business or its goods or services. Rights in passing off can also provide grounds for trademark opposition and invalidation proceedings (see Section 4 above).

6.1.1 Key requirements for passing off

The law of passing off has three key elements, which were set out by the House of Lords (now the Supreme Court) in Reckitt & Coleman Products Ltd v Borden Inc [1990] 1 WLR 491. The claimant has to establish:

a goodwill or reputation attached to the goods or services which the claimant supplies in the mind of the purchasing public by association with the identifying “get up” (eg, the brand name or other feature of the labelling or packaging), so that the “get up” is recognised by the public as distinctive of the claimant’s goods or services;
a misrepresentation by the defendant to the public, which does not have to be intentional, leading or likely to lead the public to believe that goods or services offered by them are the goods or services of the claimant; and
that they have suffered or are likely to suffer damage as a result (which may take the form of harm to their goodwill as well as actual financial loss).

6.1.2 Types of passing off

In addition to classical cases of passing off where one business is found to be passing off their goods or services as those of another as the result of the use of an identical or similar brand name or ‘get up’, passing off has also been found where:

the defendant made a misrepresentation to the public that the goods or services of the claimant were the defendants goods and services (Bristol Conservatories, Ltd v Conservatories Custom Built Ltd [1989] RPC 455); and
the defendant made a misrepresentation that a product or service was endorsed by a celebrity (for example, Irvine & Others v Talksport Ltd [2003] EWCA Civ 423).

6.1.3 Remedies

If a claim for passing is successful, the claimant will typically be entitled to the same remedies as for infringement of a registered trademark (see section 3.3 above).

6.2 Well-known trademarks

The UK also provides protection for ‘well known’ trademarks, whether or not they are registered (section 56 TMA).

A ‘well known’ trademark is a mark which is well-known in the UK as being the mark of a person who is:

a national of the UK or another country that is a party to the Paris Convention for the Protection of Industrial Property;
or domiciled in, or has a real and effective establishment in, the UK or a Convention country.

The owner of a well-known trademark is entitled to restrain by injunction the use in the UK of a trademark which is identical or similar to the well-known trademark:

in relation to identical or similar goods or services, where the use is likely to cause confusion; or
where the well-known trademark has a reputation in the UK and the use of the other trademark is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the well-known trademark.

This protection is potentially valuable for brands that are well known by the public in the UK, but are not registered or even used in the UK (so cannot be validly registered or acquire goodwill to found an action for passing off) – for example, brands that UK residents may frequently encounter when travelling abroad. A successful claimant is, however, only entitled to an injunction and not to other remedies, such as damages.