Do You Need An EU And UK Trade Mark?

Trade marks are a great way to protect your intellectual property, and your business’ identity in the market. In other ways, it’s a way of registering your brand. 

Here in the UK, you may be wondering whether or not you require both an EU and a UK trade mark. The answer depends on whether not you desire both. 

An application for a trade mark in the UK will exclusively register it in the UK. The same goes for an EU trade mark. 

If you would like to have a trade mark registered in both the EU and the UK, it’s possible to apply with the trade mark office of both regions. However, there is also the option of having your trade mark registered internationally. 

In addition to other key matters, this article will cover:

• What a trademark is
• How to get a trademark registered
• Business names and trademarks
• EU and UK trademarks 
• EU trademark search 
• Applying for a trademark in the EU
• Protecting your intellectual property 
• Trademark infringement 
• Trademark opposition 

What Is A Trade Mark?

A trade mark is a form of IP protection, and is usually used for forms of IP that contribute to its identity or branding. 

The scope of what can actually be a trade mark is rather broad as there are many things that can qualify as a trade mark. Scents, symbols, letters, numbers, pictures, phrases, colours and logos can all be trademarked. 

However, you can’t just trademark anything random. It must be connected to your brand well enough for you to claim exclusive rights over it. 

Example  Mo Farah’s famous ‘mobot’ symbol has been trademarked. The Olympian’s signature gesture of placing his arms above his head in an arched position became so famous, it was trademarked by Farah so consumers could identify that anything with the mobot was linked to Mo Farah himself.

When a trademark is registered it gives you the sole right to utilise it, licence and even sell it. 

How Do I Register A Trade Mark?

A trade mark is registered by making an application to the Intellectual Property Office (IPO). You have the option to do the application online or by mail. A typical online application costs  £170 and takes about 3-4 months to process. 

Once the application has been sent, the IPO will review it and conduct a search for trade marks that may be similar. This usually takes about two weeks, and if they find any issues with your application, they will let you know. 

If there is no trade mark similar to yours and everything with your application looks good to go, the trademark will be published in the trade marks journal. During this time, it will be up for opposition. This means that if someone has an issue with that particular trademark being registered they have the option to come forward – we’ll discuss this in more detail later. 

Trade mark opposition takes about two months. If there is no opposition during the two month period after publishing, you will have a registered trademark.

To learn more about the process of getting a trademark registered, click here.  

Do You Need To Trademark Your Business Name In The UK?

There is no requirement to trademark your business name in the UK. However, having a registered business name does not permit exclusive rights to use the name like a trade mark would. 

This is because a registered business name does not mean you possess ownership over the name. 

If you are interested in having exclusive ownership over your business name, then you should look into getting the name trademarked. 

Do You Need An EU And UK Trademark?

If you have a registered trade mark in the UK, the registration only applies in the UK and does not extend beyond it. If you’re interested in operating your business in the EU, then it’s a good idea to make sure your trade mark is protected there as well. 

If you would like to have your trademark registered in the EU, then a separate application will need to be made to the EU authority for trade marks. 

Does An EU Trade Mark Cover The UK?

Similarly, an EU trade mark is not covered in the UK. Again, if a trade mark is registered in the EU (as of Brexit) it will not be considered a registered trade mark in the UK. 

To register an already existing EU trademark in the UK, you’ll need to apply with  the UK Intellectual Property Office (IPO). 

Alternatively, if you would like to have a trade mark that is registered in multiple regions, then you can always apply for an international trademark. The World Intellectual Property Organisation (WIPO) has created the Madrid System, which is an international trademark system. Applying through the Madrid system can allow a trademark to be registered in up to 128 countries. 

If you’re looking to have a trademark that is registered in more than one country, the Madrid System is an effective solution as it’s much easier and more cost effective than applying individually in each country. 

However, this process can be a little more complicated – we recommended talking to one of our legal experts first. 

What Is The EU Trademark Search?

The EU Trademark Search is a database that allows users to look up all the trademarks that have been registered in the EU. If you are thinking of applying for a trademark in the EU, the trademark search is a great place to start to make sure the trademark you want isn’t already taken. 

How Do I Apply For An EU Trade Mark?

A trade mark can be applied for in the UK in one of two ways: 

1. Applying nationally for separate EU countries (for Belgium, Luxembourg and the Netherlands and application can be made through the Benelux Office for Intellectual Property) 
2. For all EU countries, an application can be made through the European Union Intellectual Property Office (EUIPO)  

Much like the UK process, a trade mark application in the EU will first be assessed.  The opposition period will commence and, if everything goes smoothly, the trademark will be published. 

EU Trade Mark Classes

For trade mark applications in the EU, goods must be classified according to the Nice Agreement. This is often referred to as the Nice Classification and it contains a comprehensive list of different classes of goods. 

In order to see which class your goods fall under, you can search for them on the harmonised database.  

Getting the classification of your goods right is crucial, as a trademark application can be rejected if the goods aren’t classified correctly. Make sure you’re careful with this process and contact one of our legal consultants if you have any questions. 

How Can I Protect My Intellectual Property In The UK?

Protecting your intellectual property requires more than registering a trade mark. Intellectual property are creations that are not tangible brought about by the human mind. Much like trade marks, there’s a whole range of things that can be classified as intellectual property. 

Generally, intellectual property tends to fall into one of four categories: 

• Patents
• Trademarks
• Trade secrets 
• Copyright

We’ve listed some ways in which protection can be sought for intellectual property.

NDAs 

Non-Disclosure Agreements (NDAs) protect certain information from being shared with the public or unauthorised third parties.  An NDA can be used when exposing your intellectual property to other people outside of your business. For example, you can have investors sign an NDA if they look at your business plan. 

This is an example of when it is necessary to share inside information for the purpose of getting finance, however, you still want to mitigate the risk of information ending up in the wrong hands. 

Example  Jamie is seeking investors for her new startup. When meeting with potential investors, she needs to hand them a document containing information about her startup. The document details her business plans and intellectual property.  In order to ensure investors don’t take a look at her plans and tell an outsider about it, Jamie has them sign a Non-Disclosure Agreement before showing them anything.  The agreement prevents all the potential investors Jamie meets with from telling anyone about her business plans, keeping her intellectual property and business plans secure.

Confidentiality Clauses 

Confidentiality clauses are often used in contract to ensure the parties to the contract don’t expose private information to the public. Often, confidentiality clauses are used in employment contracts, contractor agreements  and any other type of arrangement that means others will be having access to your intellectual property. 

Example Amy is creating her own software program, however, she needs an extra set of hands to help her write the codes. Amy hires Jenny to help with this.  Prior to officially employing Jenny, Amy hands her a contract of employment that contains a confidentiality clause, preventing Jenny from telling anyone about Amy’s software program.  She also inserts a Non-Compete clause, which prevents Jenny from working with Amy’s competitors in the same market for the next 6 months. These kinds of clauses prevent Jenny from sharing inside information with other competing businesses even after her employment ceases.

What Is Trade Mark Infringement?

A trade mark infringement occurs when another trade mark is identical to or deceptively similar to an already existing trade mark. There are three main instances where trade mark infringement occurs: 

• Two trade marks are identical to one another
• The trade marks are similar, however, the goods they are classified under are the same or related 
• The trade mark is well known,  even if the classification is different, there can still be an infringement

If a brand feels their trade mark has been infringed upon, they have the right to pursue legal action to get the matter rectified. 

How Does Trade Mark Opposition Work?

We touched on trade mark opposition earlier on in this article. Trade mark opposition is when a trade mark application has been approved. The trade mark is then published in the Trade Marks Journal for the public to view. 

The opposition period lasts for two months. During this time, a third party is allowed to come forward with a protest to the trade mark being registered, either for the trade mark itself or for the trade mark’s classification.  

Once a third party comes forward in opposition, proceedings will begin before the trade marks tribunal to resolve the matter. 

Key Takeaways

Registering a trade mark can be a long and meticulous process, so it’s advisable to have the advice of a legal expert trained in intellectual property matters to help you through it. 

To summarise what we’ve covered: 

• A UK trademark is only registered in the UK
• An EU trademark is only protected in the EU 
• A business name is not protected like a registered trade mark as it doesn’t give exclusive ownership 
• If you desire a trade mark that is protected in both the EU and UK, consider registering it locally or going through the Madrid systems for an international trade mark 
• There are a number of ways to protect your IP, namely through NDAs, confidentiality clauses and data breach response plans 
• Copyright infringement occurs when a trade mark is identical or similar to another trademark in looks as well as classification of goods 
• If a third party opposes your trade mark during the opposition process, the matter will be taken before the trade marks tribunal 

If you would like a consultation registering a trade mark, you can reach us at 08081347754 or [email protected] for a free, no-obligations chat.

---