Differences between UK and EU trade mark applications

Differences between UK and EU trade mark applications

The UK and EU trade mark systems are generally very similar - apart from the obvious difference that UK trade mark registrations cover the UK and EU trade mark registrations cover the European Union. A great deal of UK trade mark law remains the same as EU law following Brexit. This article is intended for EU representatives and others who are famimliar with the EU trade mark system who would like to understand where the UK application process departs significantly from that of the EU.

1. Intention to use

A key difference between the UK and EU trade mark systems is that a UK trade mark which is the subject of an application should either be used in the UK, or there should be a bona fide intention for the mark to be used on the specified goods and services in the UK. Use may be by the applicant or with their consent, for example it is sufficient that a licensee uses the mark.

Thus, it is not possible to validly "reserve" a trade mark in the UK without any real intention to make use of it. An application which has been filed without genuine intention to use is vulnerable to opposition or invalidation by a third party on grounds of bad faith. (The EU system does provide basis to challenge applications made in bad faith but mere lack of intention to use is not considered to be bad faith).

2. Series applications

In contrast to EU trade mark applications, UK trade mark applications may contain a series of marks which differ only as to matters of a non-distinctive character, not substantially affecting the identity of the trade mark. Thus, for example marks which differ in capitalisation, where the differences in capitalisation do not affect distinctive character, or which include common spelling variations (e.g. using British and American English versions of a word) can be included in series. Series marks are often useful for the protection of logos with a device and words, which may sometimes be used side by side, and sometimes may be used one above the other. There is no additional official fee to include a second mark in the series but there is a further official fee of £50 for each additional mark, up to a maximum of six marks in total. If the marks do differ in distinctive character affecting the identity of the trade mark then an objection is raised and the applicant may consider deleting at least one mark or filing at least one divisional application.

Therefore, there may be times when only one UK trade mark application will be required to protect a series of marks which would require separate EU applications. Priority can be claimed from any individual mark in a series.

3. Response to search reports

Both the UK and EU trade mark offices carry out a search for earlier conflicting applications or registrations belonging to third parties. The EU IPO automatically notifies the proprietors of earlier EU rights (but not the proprietors of any national rights in EU countries). The UK IPO will notify the proprietors of earlier UK rights but, in contrast, provides the applicant with an opportunity to amend their application, or to withdraw it in part or in whole, to either avoid some notifications or reduce the chance of a conflict arising when notifications occur.

4. Timescale

The UK trade mark application procedure is slightly quicker than the EU trade mark application procedure, perhaps taking 4-5 months instead of 5-6 months in cases with no objections or other issues to address.

5. Opposition period

When an EU trade mark application is published, there is a three month period during which third parties may file oppositions. In the UK, the corresponding period is only two months, although this may be extended by a further month if a "notice of threatened opposition" is filed.

6. Grounds for opposition

The UK trade mark opposition procedure allows for opposition on both relative grounds and absolute grounds. This contrasts with the EU trade mark opposition procedure which allows for opposition only on relative grounds. Both the UK and the EU provide a mechanism for registered marks to be challenged on absolute grounds via an invalidation action.

Otherwise, the UK and EU trade mark application procedures are generally similar in key aspects. In both cases, new applications are subject to examination on absolute grounds and a search under relative grounds. UK and EU registrations become vulnerable to cancellation for non-use if they are not used for a continuous period of 5 years. In each case, renewal fees are due every 10 years.

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