Trademarks in United Kingdom (UK) 2024

Trademarks in United Kingdom (UK) 2024 - UK Intellectual Property Office

Trademarks in United Kingdom (UK) 2024 – UK Intellectual Property Office

TRADEMARKS 2024

UNITED KINGDOM (UK)

Geoff Hussey, Daniel Byrne, Sarah Darby, Anastasia Osipovich

(AA Thornton IP LLP)

LEGAL FRAMEWORK

Domestic law

  1. What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation for trademarks is the Trade Marks Act 1994. There are a number of statutory instruments that also deal with aspects of trademarks, such as the Trade Marks Regulations 2018 and the Trade Marks (Amendment etc) (EU Exit) Regulations 2019.

International law

  1. Which international trademark agreements has your jurisdiction signed?

The United Kingdom is a party to:

  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
  • the Paris Convention for the Protection of Industrial Property;
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
  • the Agreement on Trade-Related Aspects of Intellectual Property.

Regulators

  1. Which government bodies regulate trademark law?

The Intellectual Property Office examines and decides whether to grant trademark applications. Challenges to trademarks may also be brought before this office.

Local trading standards authorities may also conduct investigations and pursue prosecutions for the unauthorized use of trademarks, particularly where there may be a public interest in doing so (e.g, when consumer safety is compromised by counterfeit goods).

Her Majesty’s Revenue and Customs may also intercept goods coming into the United Kingdom if notified of relevant trademarks and circumstances by rights holders.

REGISTRATION AND USE

Ownership of marks

  1. Who may apply for registration?

A legal or natural person may apply for or register a trademark. This includes one or more individuals, a company, or a partnership. Joint ownership of trademarks is acceptable.

Scope of trademark

  1. What may and may not be protected and registered as a trademark?

The list of signs eligible for trademark protection is not exhaustive. In principle, any sign capable of being represented in the United Kingdom’s trademark register in a clear and precise manner that allows consumers to distinguish goods or services from those of another undertaking may be registered as a trademark.

Words and logos as well as their combinations are the most common types of trademarks. Some examples of non-conventional trademarks that have been accepted include colors, sounds, slogans, three-dimensional shapes, patterns and monograms. However, these unusual trademarks are often more difficult to register.

A mark that is descriptive or non-distinctive, or both, can only be registered if it has acquired a distinctive character as a result of its usage, which must be shown by submitting evidence in support of the application.

The signs excluded from legal protection are those that are deemed to be offensive, misleading, consist exclusively of the shape directly associated with the product itself, or those that are prohibited from being registered by national or international law (e.g, state symbols and royal insignia).

Unregistered trademarks

  1. Can trademark rights be established without registration?

Unregistered trademark rights are recognized in the United Kingdom by virtue of the common law tort of passing off. Passing-off rights are acquired by using a mark in the course of trade in the United Kingdom where that use has generated goodwill in the mark.

Famous foreign trademarks

  1. Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Famous brands are afforded protection by virtue of section 56 of the Trade Marks Act 1994, which implements article 6bis of the Paris Convention and covers well-known trademarks. The owners of the marks do not have to conduct business or have any goodwill in the United Kingdom. The owners must meet the requirement of being either nationals of, being domiciled in, or having a real and effective industrial or commercial establishment in a Paris Convention member state.

While there is no definition of a well-known mark, the World Intellectual Property Organization’s Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks 1999 provides guidance on the factors relevant to the assessment of well-known marks. The United Kingdom does not have a register of well-known marks. To enforce a well-known mark in the United Kingdom, it would be necessary to submit extensive evidence to establish that a mark is well-known.

The proprietor of a well-known trademark can restrain the use of a trademark that is wholly or has an essential part that is identical or similar to the well-known mark, in relation to identical or similar goods or services, where such use is likely to cause confusion.

The benefits of registration

  1. What are the benefits of registration?

There are many benefits to registering a mark in the United Kingdom. A trademark registration confers upon its owner the right to prevent others from using an identical or confusingly similar mark for identical or similar goods to those covered by the registration. Owners of registered trademarks and applicants for registration can use their rights to oppose third-party applications for identical or similar marks. Owners of registered trademarks can sue third parties for infringement if an identical or similar mark is used without consent.

Although the United Kingdom does recognize unregistered rights under the common law tort of passing off, registered rights are generally easier and less costly to enforce than unregistered rights. To take action against third parties based on unregistered rights in a mark, it is necessary to prove these rights through evidence, whereas a trademark registration is presumed to be valid unless challenged.

Registered trademarks can also be recorded with customs in the United Kingdom, which allows customs authorities to seize counterfeit goods.

Filing procedure and documentation

  1. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

To file a trademark application, no supporting documentation is required. The following information is needed to file an application:

  • the details and an image of the mark;
  • the full name, address and nationality details of the applicant (including, if appropriate, the state of incorporation of the applicant); and
  • a list of the goods or services that the applicant offers or intends to offer under the trademark.

A trademark must be capable of being represented in the trademark register in a manner that would enable the registrar to determine the clear and precise subject matter of the protection sought.

Electronic filing of trademark applications is available via an online form provided on the Intellectual Property Office (IPO) website.

It is possible to apply for a series of marks in the United Kingdom. The material particulars of the marks included in the same series must resemble each other and differ only in matters of a non-distinctive character that do not substantially affect the identity of the trademark. A series application can include up to six variants of the mark.

Trademark availability searches are not compulsory but are usually recommended to determine and assess the risk of objection to the use or registration of the mark, on the basis of a third-party application or registration.

Registration time frame and cost

  1. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The official government filing fee for a trademark application in one class is £200 or £170 if filed electronically. There is an additional official fee of £50 for each extra class. For a series of marks, an additional official fee of £50 for each mark over two is also payable. Additional professional charges apply when applications are handled by a professional representative, the prices of which are likely to start at approximately a couple of hundred pounds, increasing depending on whether registrability, availability and specification advice is requested.

The trademark registration procedure is relatively swift, with it being possible to secure a registration in four to six months if no objection by the IPO is raised and no third-party oppositions are encountered. If objections or oppositions are encountered, the cost and time taken to obtain a registration may significantly increase, depending on the nature of the objection or opposition.

Classification system

  1. What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The United Kingdom follows the Nice Classification. Applicants are required to specify exactly which goods or services in a particular class should be covered. Multi-class applications are permitted.

Examination procedure

  1. What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

First, the IPO issues an official filing receipt when the application is filed, which provides that the application contains the minimum information required and then the application is examined. At this stage, the examiner considers whether the application meets the registrability criteria. The examination of an application usually takes place within one to two months of the filing of the application.

A search for earlier applications or registrations for identical or confusingly similar trademarks is then conducted. If relevant earlier rights are revealed, they are included in the examination report. The IPO will not refuse an application on the basis of earlier rights but will notify the owners of the earlier rights revealed by the search of the filing of a potentially conflicting application. It is up to the earlier trademark owners to oppose the application once it is published for opposition purposes.

If an objection is raised or earlier rights are identified by the examiner, an examination report will be issued. Applicants are given two months to respond to examination reports to rectify deficiencies or to argue against objections, or both. If the only issue raised in the examination report relates to earlier rights identified in the search, the IPO will set a deadline for the applicant to respond if it wants to do so.

If the applicant chooses not to respond, the application will go forward to publication and the IPO will write to the owners of earlier UK rights identified in the search to notify them of the application. It is sometimes possible to persuade the IPO not to notify earlier rights holders.

If no objection is raised or any objections have been resolved, the application is then published for opposition purposes. The opposition period is two months. Potential opponents can extend this period by one further month by filing a notice of threatened opposition at the IPO.

Finally, absent any opposition, a registration would usually be granted within one month of the close of the opposition period.

Use of a trademark and registration

  1. Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

The applicant or a representative must confirm that the applicant either uses, or has a genuine intention to use, the mark in relation to the goods and services specified in the application. No evidence is required as part of the application or registration process.

A registration will become vulnerable to revocation on the grounds of non-use if the trademark has not been used in the five years since the trademark was registered or for any uninterrupted period of five years without any proper reasons for non-use.

If the trademark has been used on some but not all of the goods and services covered by the registration, then the registration will be vulnerable to partial revocation on the grounds of non-use in relation to the goods and services on which it has not been used.

No protection is provided to marks registered in other jurisdictions unless a mark is either in use in the United Kingdom or qualifies for protection as a well-known mark by virtue of the Paris Convention.

Applicants may claim priority for UK applications from earlier foreign applications or registrations within six months of the first filing date in accordance with the Paris Convention.

Markings

  1. What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The trademark registration symbol ® must only be used once a trademark is officially registered. It is a criminal offence to use the ® for a mark that is not officially registered. The use of the ™ symbol is not restricted, and can be used for unregistered and registered trademarks.

Appealing a denied application

  1. Is there an appeal process if the application is denied?

Decisions made by the IPO can be appealed to the Appointed Person or to the High Court. Appointed Persons are senior lawyers who are experts in IP law. An appeal to the Appointed Person offers a relatively high-quality and low-cost route for an appeal. However, the decision of the Appointed Person is final and no further appeals are possible. In contrast, it is possible for a decision from a High Court appeal to be appealed further. An appeal to the High Court is more expensive but involves more of an in-depth review and can be preferable in certain cases.

Third-party opposition

  1. Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

All UK trademark applications accepted by the IPO are published for opposition purposes. There is a two-month period following publication when third parties can file oppositions. This period may be extended by one month by request. No further extensions are available.

Possible grounds for opposition include:

  • absolute grounds, when:
  • the mark is not inherently registerable as it is descriptive, non-distinctive, deceptive, generic, contrary to public policy or morality, or a specially protected emblem; or
  • the trademark application is made in bad faith; or
  • relative grounds, when:
  • there is a conflict with an earlier trademark or application, including a likelihood of confusion with earlier trademark applications or registrations;
  • it is taking unfair advantage of, or being detrimental to, the distinctive character or the reputation of an earlier trademark application or registration;
  • there is conflict with earlier unregistered rights (e.g, passing off); or
  • there is conflict with earlier design rights or copyright.

Anyone can oppose an application on absolute grounds. This includes the owners of brands registered in other jurisdictions filing an opposition on the basis of bad faith; however, the outcome will depend on the factual circumstances of each individual case. Only owners of earlier rights may oppose on the basis of relative grounds.

Following the receipt of an opposition, applicants have an opportunity to file a defense to the opposition or to request a cooling-off period designed to allow the parties to negotiate. If no defense is filed, the opposition automatically succeeds. If the applicant does file a defense, the adversarial part of the opposition proceedings commences where the parties can exchange arguments and evidence, and request an oral hearing of the matter.

Post-registration

A third party may challenge a registered trademark by filing an invalidity application based on absolute or relative grounds. If a registration is declared invalid, it will be removed from the official register as if it had never been registered.

Third parties may also apply for revocation of a registration either for reasons of non-use or on the basis that the trademark has become generic or is likely to mislead the public.

Costs

If an opposition is based solely on a conflict (e.g a likelihood of confusion) with an application or registration for an identical or similar mark, the official fee is £100. For all other cases, the official fee is £200. Additional fees will arise if a professional representative gets involved, which will depend on the complexity of the matter.

The professional fees incurred are likely to range from several hundred pounds for the initial filing of an opposition or invalidity action to several thousand pounds, depending on what is required to make the case. If the proceedings involve the compilation, filing or review of evidence, then costs are likely to be in the thousands of pounds.

If the parties choose to be represented at a hearing before the IPO rather than complete the proceedings on the basis of written submissions, costs are likely to increase. A costs award is granted against the losing party. Unless exceptional circumstances apply, the costs award will follow the scale of costs published on the IPO’s website. The scale of costs is modest and unlikely to cover the actual professional fees incurred in an opposition.

Duration and maintenance of registration

  1. How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

UK trademark registrations are valid for 10 years and must be renewed every 10 years. They can be renewed indefinitely. The renewal date is calculated from the date of application and official fees are payable upon each renewal. A trademark registration can be renewed up to six months before its expiry date and up to six months afterwards. Trademark owners are not required to submit evidence of use of the trademark on renewal.

Surrender

  1. What is the procedure for surrendering a trademark registration?

A trademark owner can surrender a registered trademark entirely or in part (namely, for all or only some goods or services). When a notice to surrender a registered trademark is filed, it must be accompanied by a declaration signed by an authorized person that every party listed as having a registered interest in the trademark has either been notified three months before the notice or has expressly consented to surrender the registration. Otherwise, it must be declared that no other party has a registered interest in the mark.

Related IP rights

  1. Can trademarks be protected under other IP rights?

Artistic or design elements included in a trademark (e.g, a logo) may be protected under copyright law, provided that they qualify for copyright protection. Copyright arises at the time of creation of a work that qualifies for protection. In other words, copyright protection arises automatically and it is not necessary to apply for it. The United Kingdom does not have a register for copyrighted works. Copyright allows the copyright owner to prevent others from:

  • copying the work;
  • distributing copies of the work;
  • renting or lending copies of the work;
  • performing, showing or playing the work in public;
  • making an adaptation of the work; and
  • communicating the work via the internet.

Registered and unregistered design rights are also available in the United Kingdom. Design rights are relevant to appearance, physical shape and configuration (or how different parts of a design are arranged together). Some design rights can also cover surface decoration. Although trademarks containing graphic elements may be protected as designs, the protection obtained differs in scope from a trademark registration.

Trademarks online and domain names

  1. What regime governs the protection of trademarks online and domain names?

The rights and remedies available to trademark holders under the Trade Marks Act 1994 and passing-off rights also apply for infringement that takes place online.

Nominet, which is the .uk, .cymru and .wales domain registry, offers a domain name dispute resolution service (DRS) that rights holders can use to object to domain names that are identical or similar to the mark over which they have rights, and that have been used in a manner that takes unfair advantage of, or is unfairly detrimental to, those rights.

To use the DRS, rights holders must submit a complaint along with evidence and pay a fee. The complaint procedure will then enter a mediation phase to try to settle the dispute between the complainant and respondent. When this is not possible, an independent expert will decide the case and, if appropriate, cancel the domain name or transfer it to the complainant.

LICENSING AND ASSIGNMENT

Licenses

  1. May a license be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?

A license may be recorded against a mark with the Intellectual Property Office (IPO) by filling in the requisite form and paying the requisite fee. If the license is not recorded within six months, the licensee may not be able to be awarded legal costs for any infringement proceedings it may bring. If the license is recorded, this will give notice to third parties of the existence of the license and will give the licensee certain rights relating to any infringement of the trademark under sections 30 or 31 of the Trade Marks Act 1994.

Those provisions provide that an exclusive licensee may, if the license allows, bring trademark infringement proceedings in its own name or may, if the license does not provide for it, bring trademark infringement proceedings in its own name after having called upon the trademark proprietor to do so, provided that the trademark proprietor has not done so within two months.

Licensing agreements typically contain provisions to regulate the use of the trademark and to allow for audits of royalty payments. Licensing agreements may also contain provisions that place obligations on the proprietor to take action for infringements. licenses must be in writing and signed by the licensor to be effective.

Assignment

  1. What can be assigned?

Trademarks with or without goodwill can be assigned. Therefore, other business assets do not also need to be assigned to have a valid assignment. However, assignments without goodwill may create difficulties for the assignee and should usually also be assigned. In addition, the law provides that a contractual obligation to transfer a business carries with it the presumption that this includes an obligation to transfer any registered trademarks unless the contrary intention is clear.

An assignment may be partial in the sense that it may apply to some, but not all, of the goods and services for which the mark is registered and to use in a particular manner or in a particular locality (although these latter options are rarely seen).

Assignment documentation

  1. What documents are required for assignment and what form must they take? What procedures apply?

No special documents or procedures are required, except that an assignment must be in writing and signed (or, in the case of a Scottish company, by affixing the corporate seal) by the assignor to be effective. There need not, arguably, even be a contract or consideration paid for the assignment.

Validity of assignment

  1. Must the assignment be recorded for purposes of its validity?

No, an assignment need not be registered to be valid per se but, like for licenses, if the assignment is not recorded within six months then the assignee may not be able to be awarded legal costs for any infringement proceedings that it may bring. Recording the assignment will also give notice to third parties and render it effective against parties who may otherwise acquire a conflicting interest in ignorance of the assignment.

Security interests

  1. Are security interests recognized and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Security interests are registrable transactions such as licenses and assignments, and, similarly, recording a security interest with the IPO will protect the transaction from being ineffective against those who acquire a conflicting interest in or under the trademark in ignorance of the security interest. Where trusts involving trademarks exist, security interests will not be entered into the register.

ENFORCEMENT

Trademark enforcement proceedings

  1. What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Trademark infringement proceedings can be brought in a number of ways before courts, which are distinguished mostly by their caps on the amount of the damages and costs that can be recovered, and by the degree of evidence and the streamlining of procedure. For damages claims over £500,000, the High Court is the correct court. For damages claims up to £500,000, the Intellectual Property Enterprise Court (IPEC) multi-track is the appropriate forum. For claims up to £10,000, the IPEC small claims track is most appropriate. Both of the latter tracks are technically specialist lists of the High Court.

Section 92 of the Trade Marks Act 1994 makes it a criminal offence to use trademarks in a variety of ways without the consent of the proprietor. While it is possible to bring a private prosecution, such offenses are normally pursued by government authorities.

Procedural format and timing

  1. What is the format of the infringement proceeding?

The format for infringement proceedings depends largely on the forum in which they are brought. Generally, there is some degree of disclosure of documents and witness evidence, which is normally given in writing and subject to live oral cross-examination. Expert evidence may be permissible in appropriate circumstances and sometimes permitted for interpreting surveys that have been carried out. A single judge will decide the cases at first instance (more judges sit on appeals). It can take from 12 to 18 months for a claim to reach trial and the length of the trial can vary depending on the circumstances (e.g, from less than a day to a number of weeks).

Criminal proceedings may be brought privately, but this is rare and normally such prosecutions are brought by government authorities in the appropriate (normally magistrates) courts.

Burden of proof

  1. What is the burden of proof to establish infringement or dilution?

Infringement is to be established on the balance of probabilities and the claimant has the burden of proving its claim.

Standing

  1. Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A trademark proprietor may bring infringement proceedings, but so may a licensee in certain circumstances, depending upon what is provided for in the license and the status of the licensee as exclusive or non-exclusive. While brand owners have the necessary standing to bring a criminal prosecution, this is relatively rare, and government authorities normally bring these.

Border enforcement and foreign activities

  1. What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

It is possible to notify customs in advance to seize any infringing goods they identify as they enter the United Kingdom. There are time-limited procedures once customs have seized goods and informed the rights holder that relate to whether the goods will be destroyed, released or retained, pending court proceedings. Activities that occur outside of the United Kingdom are unlikely to give rise to a claim for infringement unless they in some way target or are directed at the United Kingdom.

Discovery

  1. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Disclosure is an important part of legal proceedings in UK courts. However, the disclosure that may be obtained will depend upon which forum is chosen to pursue the claim and the issues in the case. Standard disclosure, which essentially requires both parties to provide relevant documents that are supportive of and damaging to its case, can be a costly exercise. A pilot scheme of alternative rules for disclosure has been run and has now been implemented more widely (by Practice Direction 57AD to the Civil Procedure Rules) and aims to tailor the disclosure ordered, to be proportionate in scope and cost to the case.

It is possible to obtain court-ordered disclosure in advance of any proceedings (namely, pre-action), subject to some strict rules and to the obtaining party paying the costs. It is also possible to obtain disclosure from third parties, particularly if they are in some way (innocently) involved in the infringement and not otherwise easily added as a party to the litigation. It may also be possible to persuade the court to order the specific disclosure of identifiable documents. Seeking disclosure outside of the country is difficult and relies upon the cooperation of courts in other countries (e.g, by letters rogatory).

Timing

  1. What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

Preliminary (interim) injunctions may be heard quite quickly (e.g, within weeks rather than months) as is consistent with the need for urgency in such applications. Infringement cases will often be heard within 12 to 18 months, with any appeals heard within a further 12 months.

Limitation period

  1. What is the limitation period for filing an infringement action?

The limitation period for trademark infringement is six years from the date of the infringement. Therefore, claims should ideally be brought within six years of that date (although this is less of an issue where there is an ongoing infringement). There is some case law on the question of what bringing a claim means, but it is generally safe to assume that issue of proceedings is sufficient. However, claim forms that are not served within a specified period (generally four months) will expire, which can have significant consequences if limitation is an issue.

Litigation costs

  1. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Costs to litigate can vary widely depending upon the forum chosen, the issues in the case, the type of disclosure that is ordered and the applications that are made by the parties. The typical range of costs for a trademark infringement action before the High Court up to and including trial is between £195,000 and £525,000. Costs are ordinarily lower in the other forums. Appeal costs are likely to range between £50,000 and £150,000.

In the United Kingdom, the general rule is that the winner should recover its costs for the proceedings. However, this is subject to the rule that costs should be proportionate to the matters in issue and costs that are disproportionate will be disallowed (even if reasonably or necessarily incurred). This means that parties can expect not to recover the full amount of costs expended even if they win, although up-front costs budgeting has mitigated this risk somewhat.

Certain forums have specific costs recovery rules such that the winner may, essentially, only obtain the fixed fees of bringing the claim (e.g, the court fees) on the IPEC small claims track (namely, where the value of damages is up to £10,000), or have their fees capped for various phases up to a maximum of £60,000 on the IPEC multi-track (namely, where the value of damages is below £500,000).

Appeals

  1. What avenues of appeal are available?

Appeals from a first-instance decision (e.g, the High Court) are ordinarily to the Court of Appeal.

Defenses

  1. What defenses are available to a charge of infringement or dilution, or any related action?

A typical defense might deny that there is infringement due to a denial of use of a sufficiently similar sign for sufficiently similar goods, etc. Otherwise, since an invalid trademark cannot be infringed, it is quite common for defendants to seek to challenge the validity of the asserted trademark on various grounds.

There is a statutory defense that the use of a registered trademark is not an infringement of another registered trademark. However, this can be more complicated to assert than it at first appears and often leads to related invalidity or revocation actions.

There is also a defense that a trademark is not infringed by the use of an earlier right in a particular locality that applies only to that locality. This is generally understood to apply to unregistered rights, such as the law of passing off.

It is also a defense if the asserted mark is liable to be revoked for non-use, but such a defense tends to lead to the mark being sought to be revoked for non-use as opposed to merely being liable to be revoked for non-use.

Remedies

  1. What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The usual remedies available are an injunction either on an interim or final basis, together with damages or an account of profits. The choice between damages and account of profits is the successful claimant’s choice, normally after appropriate disclosure from the unsuccessful defendant. For this reason (among others), the damages trial is separate from the liability trial. Damages are intended to represent the loss that has been suffered by the trademark proprietor as a result of the infringement, whereas accounts of profits relate to the profit that has been made by the infringer as a result of the infringement. Very often matters settle at this stage because the costs of a damages trial can be substantial.

A final injunction is generally granted to the successful claimant. An interim injunction – pending trial – is much harder to obtain as there are a set of requirements that must be met, including that the injunction must be sought urgently (delay may defeat it) and that the loss that the claimant will suffer will not be able to be compensated for in damages. The claimant must also provide an enforceable undertaking that it will pay compensation to the defendant if the injunction is wrongly granted and the defendant suffers damage as a result.

The criminal remedies are fines or imprisonment, or both, but these are not obtainable in the civil courts.

ADR

  1. Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR options, such as mediation, are available to parties but are generally not mandatory. Failure to engage with ADR options may have costs consequences and parties are encouraged to consider these options at every stage. However, the imposition of sanctions is relatively rare.

UPDATE AND TRENDS IN TRADEMARKS IN UNITED KINGDOM (UK)

Key developments of the past year

  1. Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Post-Brexit, there was a consultation on trademark exhaustion because the United Kingdom continued to operate a system of exhaustion if goods are placed on the market in the European Economic Area by the proprietor or with the proprietor’s consent, but this was not reciprocated by the European Union. The outcome of the consultation has been to maintain the status quo and to avoid the alternative option of international exhaustion (which was controversial).

The UK Supreme Court heard the appeal in the BSkyB v SkyKick trade mark case on 28 to 29 June 2023. Judgment is awaited and will determine the UK approach to bad faith in trade mark filings and the consequential validity of a large proportion of marks on the register.

There has also been case law in relation to the way in which earlier trademarks might be purchased and deployed in litigation. It has been held by the Court of Appeal that any such purchase in the context of litigation must not be delayed being deployed (namely, hidden) even if doing so negates the right in question (e.g, because it is otherwise fatally flawed by reasons of non-use).

* The information in this chapter was accurate as at July 2023.

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