UK Law and Practice Contributed by: Paolo Palmigiano, Rachael Roberts, Helen Farr, Debbie Heywood and Louise Popple, Taylor Wessing LLP
7.2 Trade Marks Broadly, a trade mark is any sign capable of distinguishing the goods and services of one undertaking from those of others. A trade mark can consist of, for example, words (including personal, business and brand names), logos, patterns, letters, numerals, colours, sounds, motions, holograms, videos and the shape of goods or their packaging. Provided they are not cancelled, trade mark registrations subsist for ten years from the date of registration, and can be renewed (potentially indefinitely) for succes - sive periods of ten years on payment of a fee. No proof of use is required for renewal. Trade mark protection can be obtained by filing an applica - tion with (i) the UK IP Office, or (ii) the World Intellectual Property Organization (WIPO) for an international mark designating the UK. The lat - ter can be cheaper and administratively easier if applications for the same mark are being filed in numerous jurisdictions. Trade marks must be registered for specific goods and/or services. Protection for one good/service will not neces - sarily mean that the owner can prevent third- party use of the same mark for other goods/ser - vices. Unlike some other jurisdictions, a trade mark does not need to have been used for an application to be filed. However, once registered, if a mark is not put to genuine use for a con - tinuous period of five years in the UK, it can be revoked on application of a third party (subject to various conditions). Once filed, applications are examined to deter - mine whether they meet the definition of a registrable trade mark. Following successful examination, applications are published 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 objec -
tions 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 long - er 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 exist - ence as of 31 December 2020. The UK law of passing off also protects the goodwill generated through the use of 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 infringe - ment include compensation, an injunction to restrain the infringement, delivery up/destruction of infringing materials, publication of the judg - ment and legal costs. Interim injunctions can also be obtained. Brand owners are strongly advised to (i) con - duct 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 Design There are two main types of design protection available in the UK, a registered design and an unregistered design. Both protect the appear - ance 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/packaging). Sur - face decoration is also protected.
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