ENGLAND & WALES Law and Practice Contributed by: James Ross, Paolo Palmigiano, Debbie Cloake, Helen Farr, Debbie Heywood and Louise Popple, Winston Taylor
be revoked on application of a third party (subject to various conditions). Applications are examined to determine whether they meet the definition of a registrable trade mark. Fol - lowing successful examination, applications are pub - lished to allow oppositions to be filed by any third parties who consider they have a conflicting prior right. The UK IP Office will not raise an objection on these grounds of its own volition. Assuming any objections and oppositions are successfully resolved, an application will be registered (usually within about five months). Now that the UK is no longer part of the EU, EU trade marks (EUTMs) no longer cover the UK. However, the UK legislated to fill the gap by creating a new UK mark (called a “comparable trade mark”) for all EUTMs in existence as of 31 December 2020. The UK law of passing off protects the goodwill gener - ated through using a trade mark (whether that mark is registered or not). It can also be used to prevent false endorsements and some misleading claims of equivalence. Trade mark and passing-off rights are enforced through the UK courts. Remedies for infringement include compensation, an injunction to restrain the infringement, delivery up/destruction of infringing materials, publication of the judgment and legal costs. Interim injunctions can also be obtained. Brand owners are strongly advised to (i) conduct clearance searches before launching new brands in the UK to check that they will not be infringing anyone else’s rights, and (ii) file trade mark applications before announcing/launching new brands. This could save the considerable costs and embarrassment of having to re-brand. 7.3 Industrial Designs There are two main types of design protection availa - ble in the UK: a registered design and an unregistered design. Both protect the appearance of a product or its packaging, resulting from their features (including features resulting from the lines, contours, colours, shape, texture and/or materials of the product/pack - aging). Surface decoration is also protected. To be protected, a design must be new and have individual
character, and not be dictated by the technical func - tion of the product. A design registration lasts for a maximum of 25 years and must be renewed every five years (on payment of a fee). Unregistered design protection subsists for three years from first disclosure. Registered pro - tection is much stronger (in particular, unregistered designs are only infringed when copied). If registra - tion is required, an application must be filed within 12 months of first disclosure of the design; otherwise, the design will be deemed not new. Registered protection can be obtained by filing an application with (i) the UK IP Office or (ii) WIPO for an international design designating the UK. The latter can be cheaper and administratively easier if applications for the same design(s) are being filed in numerous jurisdictions. There is very little examination of design applications, and no opposition procedure. Multiple designs can be filed in the same application to save costs. Since the UK is no longer part of the EU, pan-EU Reg - istered and Unregistered EU Designs no longer cover the UK. However, any such designs in existence on 31 December 2020 continue to be protected in the UK for the life of the right. Designs are enforced through the courts in the UK. Remedies for infringement include compensation, an injunction to restrain the infringement, delivery up/ destruction of infringing materials, publication of the judgment and legal costs. Interim injunctions can also be obtained. The UK also protects another form of unregistered design (called a “design right”). It is similar in scope to the unregistered design, although there are key dif - ferences – eg, a design right does not protect surface decoration. 7.4 Copyright Copyright protects original literary, dramatic, musi - cal and artistic works, as well as other subject matter (including sound recordings, films and broadcasts). It therefore protects original drawings, graphics, soft - ware code, literature and databases. Copyright gen -
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