What You Can and Cannot Trade Mark in the UK

One of the first questions we hear from people starting a business in the UK is whether or not they should trademark their business name.

Well, you can’t. But you can trademark a product or service.

Trademarks are complicated beasts, and successfully registering a trademark only protects in you the country in which that trademark is registered. If you plan on running an international business, then you might need to register your trademark in multiple other jurisdictions. This is especially true in China, where trademark theft is rife, and the legal system offers little protection.

What is a trademark?

A trademark is any mark that uniquely distinguishes one business’s products or goods from another’s.

The mark can be a word, symbol, colour or combination of colours, sound, etc.

Each jurisdiction has its own rules for what precisely can be trademarked and what cannot.

For example, in the USA and Australia, it is possible to trademark a unique scent. (The scent must be able to be described using words, though.)

Some jurisdictions even allow you to trademark plants.

In Australia, a particular style of jumping is trademarked by Toyota — it is called a motion trade mark.

Yes, it’s a bit of a crazy world. But that doesn’t change the law and your rights within that law.

What can you trademark in the UK?

The UK is fairly limited in what one can trademark compared to other, more liberal jurisdictions such as Australia and the USA.

In the UK, one can trademark:

• Words
• Sounds (e.g. this sound from Intel)
• Logos
• Colours (Castrol has registered its special shades of green and red. Cadbury tried to register its special shade of purple, but this was contested quite forcefully by Nestlé who eventually won the case at the highest levels.)
• A combination of any of the above

Can you trademark a domain name in the UK?

A company name and domain name cannot be registered as a trademark.

Owning a trade mark doesn’t automatically entitle you to that particular domain name. This matter has been the source of many lawsuits over the decades (especially on the part of Microsoft).

And, of course, if you register a domain name with an accredited domain name registrar, that doesn’t automatically give you the right to trade using that name.

The only way to obtain the rights for your trademark is to properly register that trademark in the UK as well as in any other jurisdiction in which you plan to sell your goods.

What can you not trademark in the UK?

In addition to domain names and company names, the UK’s Intellectual Property Office (IPO) specifies the following items as taboo for trademark purposes:

Protected emblems and symbols such as:

• Flags
• Hallmarks
• Other State emblems#
• Official signs
• Armorial bearings (coats of arms)

What is the procedure for registering a trademark in the UK?

Most countries have a fairly similar procedure for registering trademarks. The UK’s specific procedure is:

• Search existing databases to see if the mark is already trademarked.
• Determine the class for the mark. (The UK, like most jurisdictions, uses the Nice classification system).
• File the application.
• The IPO can then raise objections on the basis of deficiencies in the filing.
• These are replied to by the filer or their representative.
• The time frame for the above: About one month.
• IPO raises official objections if any.
• Filer furnishes arguments against the objection.
• If the arguments succeed, the filing continues.
• Time frame: About 3 – 5 months.
• The registration is published.
• This is followed by a two-month period (extendible to three months) in which any opponents may file an opposition to the trademark (as happened between Nestlé and Cadbury when the latter tried to register its special shade of purple).
• If there is no opposition (or the opposition fails), then the mark is formally registered.

Once a mark is formally registered by the IPO, the owner has full legal rights to defend against its use and abuse by others.

First-to-file vs first-to-use

The UK uses a first-to-file policy with regards to trademarks which means that rights are conferred only on successful registration and not on previous use.

This is in contrast to the USA, which uses the first-to-use policy. That means that the first person to use the mark has a right to object to it being registered even if they have not filed for registration previously.

There are pros and cons to both systems.

First-to-file systems can lead to abuse and the loss of rights simply for failing to register a mark that one has been using for years. Whereas as first-to-use policies can lead to frustration (and lawsuits) as a result of marks being unknown until much later because there is no central database to search for marks.

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Shoaib Aslam

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