As the dominant industrial and maritime power of the 19th century,
the United Kingdom of Great Britain and Ireland played a leading
role in developing parliamentary democracy and in advancing
literature and science. At its zenith, the British Empire stretched over
one-fourth of the earth's surface. The first half of the 20th century
saw the U.K.'s strength seriously depleted in two world wars and the
Irish republic withdrawal from the union. The second half witnessed
the dismantling of the Empire and the U.K. rebuilding itself into a
modern and prosperous European nation. As one of five permanent
members of the UN Security Council, a founding member of NATO,
and member of the Commonwealth, the U.K. pursues a global approach
to foreign policy. It currently is weighing the degree of its
integration with continental Europe. A member of the EU, it chose to
remain outside the Economic and Monetary Union for the time being.
Constitutional reform is also a significant issue in the U.K. The Scottish
Parliament, the National Assembly for Wales, and the Northern
Ireland Assembly were established in 1999, but the latter is suspended
pending the outcome of peace pfocess.
Who May Apply?
Any natural or legal person who is capable of owning personal property
may apply for registration. The person must be using or have a
bona fide intention to use the applied-for mark, but use may be by another
with the applicant's consent. Two or more persons who are
capable of owning personal property may file a joint application.
The first applicant is entitled to registration of a mark. However, a
prior user who has used a mark sufficiently to be able to stop the applicant
under the common law may oppose the application through a
Under the International Convention, any person who has applied
for protection for a trademark in a country subject to the Convention, any, of the Channel Islands, or a colony, country, or territory where
there are reciprocal provisions for the protection of marks, or his legal
representative or assignee, is entitled to registration of his trademark
with priority over other applicants, provided that the trademark
conforms to the provisions of the Trade Marks Act 1994, and provided
that the application is made within six months from the date of filing
of the first application to register the mark. Priority must be claimed
What Can Be Registered?
Any sign or indication used as a trademark which can distinguish
the goods and services of one trader from those of another can be
registered. The trademark must be distinctive for the goods or services
for which registration is sought and must be capable of being
represented graphically. A trademark may include words, including
personal names, letters, numerals, logos, pictures, sounds, smells,
colors, forms (such as three-dimensional marks), or any combination
The Trade Marks Act 1994 provides for the registration of series
trademarks, collective marks, and certification marks, the division of
a trademark application into several applications, and the merging of
separate applications or registrations for the same mark.
What Cannot Be Registered?
The following may not be registered:
"Absolute" grounds of objection:
1. Signs which do not fall within the definition of "trademark;
2. Trademarks which are devoid of any distinctive character;
3. Trademarks which consist exclusively of signs or indications
which may serve, in trade, to designate the kind, quality, quantity,
intended purpose, value, geographical origin, the time of production of I goods or of rendering of services, or other characteristics of goods or
4. Trademarks which consist exclusively of signs or indications
which have become customary in the current language or in the bona
fide and established practices in the trade;
5. Trademarks which consist solely of the shape which results from
the nature of the goods themselves;
6. Trademarks which consist solely of the shape which is necessary
to obtain a technical result;
7. Trademarks which consist solely of the shape which gives
substantial value to the goods; 8. Trademarks which are contrary to public policy or to accepted
principles of morality;
9. Trademarks of such a nature as to deceive the public;
10. Trademarks that are prohibited from use in the United
Kingdom by any enactment or rule of law or by any provision of
European Community law;
11. Trademarks for which application for registration was made in
12. Trademarks which consist of or contain:
(a) The Royal arms, or any of the principal armorial bearings of
the Royal arms, or any insignia or device so nearly resembling
the Royal arms or any such armorial bearings as to be likely to be
mistaken for them;
(b) A representation of the Royal crown or any of the Royal
(c) A representation of Her Majesty or any member of the Royal
family, or any colorable imitation thereof; or
(d) Words, letters, or devices likely to 1,ead persons to think
that the applicant either has or recently has had royal patronage
The marks in a-d above may not be registered unless it appears to
the Registrar that consent has been given by or on behalf of Her Majesty
or, as the case may be, the relevant member of the Royal family.
13. Trademarks which consist of or contain a representation of the
national flag of the United Kingdom or the flag of England, Wales,
Scotland, Northern Ireland, or the Isle of Man may not be registered
if it appears to the Registrar that the use of the trademark would be
misleading or grossly offensive.
14. Trademarks falling within the proscribed marks set forth in
Article Gter of the Paris Convention.
15. Trademarks which consist of or contain a controlled representation
within the meaning of the Olympic Symbol etc (Protection) Act of
1995 may not be registered unless it appears to the Registrar that:
(a) the application is made by the person for the time being appointed
under section l(2) of the Olympic Symbol etc (Protection)
Act 1995 (power of Secretary of State to appoint a person as the
proprietor of the Olympics Association Right), or
(b) the consent has been given by or on behalf of the person
mentioned in paragraph (a) above.
"Relative" grounds of objection:
Since October 1, 2007, the Registrar of Trade Marks will no longer
refuse applications on the basis of an earlier conflicting trademark unless the owner of the earlier mark opposes successfully the new
The Trade Marks Act 1994 allows for the registration of a trademark
where the proprietor of the earlier trademark or other earlier right
consents to the registration.
Honest concurrent use:
Since October 1, 2007, the provisions allowing registration of marks
for which there has been honest concurrent use despite the existence
of an earlier trademark or right, no longer apply. This is consistent
with the elimination of refusals on relative grounds, as discussed
A trademark may not be registered if (1) it is identical to an earlier
trademark and is to be registered for goods or services identical to
those for which the earlier trademark is protected, or (2) it is identical
or similar to an earlier trademark and is to be registered for goods or
services identical to or similar to those for which the earlier trademark
is protected, and there exists a likelihood of confusion on the part of
the public, which includes the likelihood of association with the earlier
A trademark which is identical to or similar to an earlier trademark
may not be registered if, or to the extent that, the earlier trademark
has a reputation in the United Kingdom (or, in the case of a Community
trademark, in the European Community), and the use of the
later mark without due cause would take unfair advantage of or be
detrimental to the distinctive character or repute of the earlier
A trademark may not be registered if, or to the extent that, its use
in the United Kingdom is liable to be prevented:
(1) by virtue of any rule of law (in particular, the law of passing
off) protecting an unregistered trademark or other sign used in the
course of trade, or
(2) by virtue of an earlier right other than those already referred
to, in particular, by virtue of the law of copyright, design right, or
A person thus entitled to prevent the use of a trademark is referred
to in the 1994 Act as the proprietor of an "earlier right" in relation to
the trademark. Nothing in the Act prevents the registration of a
trademark where the proprietor of the earlier trademark or other
earlier right consents to the registration.
In the 1994 Act, "earlier trademark" means:
(1) a registered trademark, international trademark (U.K.), or
European Community trademark, which has a date of application
for registration earlier than that of the trademark in question, taking
into account (where appropriate) the priorities claimed in the
(2) a European Community trademark which has a valid claim to
seniority from an earlier registered trademark or international
trademark (U.K.); or (3) a trademark which, at the date of application for registration
of the trademark in question or (where appropriate) of the priority
claimed in the application, was entitled to protection under the
Paris Convention as a well-known trademark, following Article Gbis
of the Paris Convention. An earlier trademark also includes a mark
for which an application for registration has been made and which,
if registered, would be an earlier trademark, subject to its being
A registered trademark is not infringed by the use in the course of
trade in a particular locality of an earlier right which applies only in
that locality. For this purpose, an "earlier right" means an unregistered
trademark or other sign continuously used in relation to goods
or services by a person or a predecessor in title of his from a date
prior to whichever is the earlier of:
(1) the use of the first-mentioned trademark in relation to those
goods or services by the proprietor or a predecessor in title of his, or
(2) the registration of the first-mentioned trademark for those
goods or services in the name of the proprietor or a predecessor in
title of his; and an earlier right is regarded as applying in a locality
if or to the extent that its use is protected by virtue of any rule of
law (in particular, the law of passing off).
A registered trademark is not infringed by:
(a) the use by a person of his or her own name or address,
(b) the use of indications concerning the kind, quality, quantity,
intended purpose, value, geographical origin, time of production of
goods or of rendering of services, or other characteristics of goods or
(c) the use of the trademark where it is necessary to indicate the
intended purpose of a product or service (in particular, as accessories
or spare parts),
provided that the use is in accordance with honest practices in
industrial or commercial matters.
A person is not prevented from using a registered trademark for the
purpose of identifying goods or services as those of the proprietor or a
licensee, but any such use otherwise than in accordance with honest
practices in industrial or commercial matters will be treated as
infringing the registered trademark if the use, without due cause,
takes unfair advantage of or is detrimental to the distinctive character
or repute of the trademark.
Applications for registration require a completed application form,
which may be signed by the agent and must contain the following elements
to obtain a filing date:
1. A request for registration of a trademark (the application form
itself is deemed to constitute such a request).
2. The full name and address of the applicant. This must be the
correct legal name of the applicant, and not, for example, a trading
name. If the applicant is a corporate body, the country of incorporation
is required. If the applicant is a U.S. corporation, the state of
incorporation is also required.
3. A list of the goods or services applied for. While class numbers
are not required to obtain a filing date, the application will be unable
to progress until the class numbers are supplied.
4. A representation of the trademark.
If any of these elements are not present in the application, a filing
date will not be granted until all of the elements have been filed at
The application should indicate any other relevant information, for
example, whether the application is for a certification or collective
mark, a series of marks and how many of them are in the series, and
any other information regarding the mark or type of mark.
An application must contain a statement by or on behalf of the applicant,
either that the applicant is using the mark or that it is being
used with the applicant's consent, or that the applicant has a bona
fide intention to use the trademark in relation to the goods or services
applied for. The statement appears on the official application form.
If the applicant is not based in the U.K. and is not represented by
someone based in the U.K., the applicant must provide an address for
service within the EC or the EEA.
No power of attorney is required. Official fees are payable for each
class of goods or services in the application.
Priority must be claimed on filing. Details of the date, number, and
country of the mark(s) from which priority is claimed must be provided
on the application form. A certified copy of the priority application(s)
must be filed within three months of filing. An English translation is
not routinely required. If a translation is required, the Registry will
set a term for its submission. Failure to comply with any of the formal
requirements for claiming priority will not affect the validity of the
application itself, but it may result in the loss of the priority rights. Prints or copies of a logo trademark are sufficient as long as the
representation is clear, precise, self-contained, easily accessible, durable,
Evaluation & Review
An application for registration of a trademark must'be filed at the
U.K. Trade Marks Registry. The application is subject to the payment
of the application fee and such class fees as may be appropriate.
If there are any deficiencies in the content of the application, the
applicant will be notified and given a nonextendable two-month period
to rectify the deficiency. If the deficiency relates to an essential
filing requirement and it is not rectified within the relevant period,
the application is deemed never to have been made. If the deficiency
relates to a nonessential filing requirement and it is not rectified
within the relevant period, the application is deemed abandoned.
The Registrar will examine the application on absolute grounds.
There is no examination on relative grounds (see discussion above).
Nevertheless, there is a search and notification procedure. The Registrar
conducts a search as part' of the examination process and informs
both the applicant for registration of the results of the search and also
the proprietors (except excluded proprietors) of earlier conflicting
trademarks identified, if and when the application proceeds to
publication. An excluded proprietor is a proprietor of a U.K. application
or registration who has informed the Registrar in writing that he
wishes to be excluded from receiving such notifications. Excluded
proprietors also include the proprietors of Community Trade Marks
and International Trade Marks which have designated the European
Community as a whole for protection who have not asked to be notified
of such matters by opting-in to receive such notifications. . - -
The Registrar's search covers earlier pending and registered
trademarks with effect in the U.K., including Community Trade
Marks and International Registrations. If it appears to the Registrar
that there are absolute grounds for objection, the applicant will be
notified and given an opportunity to respond to the objections. A response
may consist of one or a combination of the following: an amendment
of the application, written arguments, the filing of evidence, and
requesting and attending an oral hearing.
1n an &tempt to remove a mark from the Registrar's search, the
applicant may restrict his specification. The applicant may make one
written submission to support the view that a mark is included on the
search report in error. The Registry will not enter into a continuing
dialogue on this issue.
The initial period for responding to absolute objections is normally
three months. If an extension of this period is required, a reasoned request for an extension of time must be filed before the expiry of the
period. An official fee is payable in some circumstances.
If the applicant fails to overcome the objection(s) or fails to respond
before the end of the period specified by the Registrar, the Registrar
will refuse to accept the application. If the applicant overcomes the
objection(s), the application will be accepted for publication.
Once an application has been published, any person may, within
three months of the publication date, file an opposition.' The opposition
period cannot be extended. Alternatively, at any time before the
registration of the trademark, a third party may make observations in
writing to the Registrar regarding whether the trademark should be
registered, and the Registrar will inform the applicant of any such
Where an application has been accepted and no notice of opposition
is filed within the opposition period or all opposition proceedings are
withdrawn or decided in favor of the applicant, the Registrar will register
the trademark unless it appears to him or her that the application
was accepted in error. There are no official registration fees.
The mere registration of a domain name does not, in itself, confer
any trademark rights under U.K. law. However, use of a domain name
in relation to the supply of goods or services in the U.K. may help to
establish goodwill and reputation, which are the first ingredients necessary
to establish a claim for "passing off' at common law. Domain
names are potentially capable of being registered as trademarks in
the U.K., subject to the domain name's fulfilling the criteria applied to
other types of signs.
The authority in the U.K. responsible for all domain names ending
in.uk is Nominet (www.nominet.org.uk). Applicants for a domain
name are encouraged to register via an Internet service provider (ISP)
that is a member of Nominet U.K., although registration directly with
Nominet is possible.
Nominet will not carry out any search to check for prior conflicting
rights in a trademark. U.K. (.uk) domain names are registered for an
initial period of two years and may be renewed for additional periods
of two years.
Owners of earlier rights in a name or mark may contest the registration
of a conflicting domain name by submitting a complaint to
Nominet's Dispute Resolution Service. For a complaint to succeed, a
complainant must prove on the balance of probabilities that:
1. she has rights in a name or mark that is identical or similar to
the domain name(s), and
2. the domain name(s) in the hands of the' respondent is an abusive
registration. An abusive registration means a domain name which either:
1. was registered or otherwise acquired in a manner which, at the
time when the registration or acquisition took place, took unfair
advantage of or was unfairly detrimental to the complainant's
2. has been used in a manner which took unfair advantage of or
was unfairly detrimental to the complainant's rights.
The Dispute Resolution Procedure generally proceeds as follows:
1. filing a complaint (by the complainant),
2. filing a response (by the registrant),
3. filing a reply (by the complainant).
Nominet thereafter engages in informal mediation to attempt to help
the parties resolve the dispute. Any binding agreement must be made
in writing or similar electronic form.
If a mutually acceptable resolution cannot be achieved, the
complainant may, upon payment of the relevant fee, request the appointment
of an expert to make a decision. The expert has the authority
to order that a domain-name registration be cancelled, suspended,
transferred, or otherwise amended. Either party may appeal a decision
to a panel of three experts upon payment of the relevant fee.
The existence of Nominet's Dispute Resolution Procedure does not
preclude a party from initiating legal proceedings in a court of
competent jurisdiction in relation to a.uk domain name. A U.K. court
of competent jurisdiction has the power to order the transfer of a
domain name. The court may also grant a request for costs and damages
or an account of profits for any trademark infringement or passing
off occasioned by the use and registration of the disputed domain
The owner of an earlier domain-name registration may, in certain
circumstances, be able to prevent the registration of a later conflicting
trademark, where that trademark was filed in "bad faith."