The main types of intellectual property (IP) rights in the UK are:
- Trade marks, both registered and unregistered
- Patents
- Designs, both registered and unregistered
- Copyright
- Trade secrets.
If you are launching a business in the UK, you may well want to consider some or all of these (at least to replicate the protection you have in other territories). Please note that, with effect from the end of the Brexit ‘transition period’ on 31 December 2020, EU-wide rights no longer give protection in the UK and the UK will not be deemed to form part of any relevant EU-wide regime. As noted below, this has particular implications for the UK’s trade mark and registered/unregistered designs regimes.
Burges Salmon can advise you on your UK IP rights and help to guide you through application processes. The information below provides an overview.
Trade marks
Unregistered rights: In the UK, unregistered rights in a brand may be created through use of that brand over time, as goodwill is built in it: this may enable the owner to bring a passing off action to prevent third parties from using an identical or highly similar brand. However, there are disadvantages to relying on this approach – not least its uncertainty and the heavier burden of proof.
Registered rights: If you are launching in the UK, it is strongly preferable to register your brands as trade marks. This creates both an asset and a clearer right to enforce.
Territory: Trade mark protection is territorial, so that applications need to be filed in each country or territory of interest to a business. This means that even if a company has trade mark registrations elsewhere, e.g. Japan or the USA, these rights will not automatically extend to the UK.
Options: In the UK, there are currently two ways of obtaining registered trade mark:
- a UK national trade mark application; and
- an international trade mark application designating the UK or EUTM.
Please note, Brexit has changed the position vis-à-vis obtaining trade marks in the UK, most notably in respect of EU trade marks (EUTMs). All EUTMs registered prior to 1 January 2021 were automatically ‘cloned’ and recorded as new (and distinct) marks on the UK trade mark register (a ‘comparable UK trade mark’). These new comparable UK marks retained the EUTM filing, priority and/or UK seniority dates associated with the underlying EUTM. In contrast, however, any EUTM applications pending as at 1 January 2021 (and therefore registered after 1 January 2021) were not subject to this cloning process. Owners of any such marks will have a nine-month period within which to register a comparable UK trade mark. Successful applications submitted within this period will retain the same filing, priority and/or UK seniority dates as the original EUTM.
We are happy to advise further on any of these points, including the impact of Brexit.
Clearance Searches: Even if a brand is well established in another territory, it is strongly recommended to conduct clearance searches in the UK before launching or filing a new trade mark application here, to see if there are any earlier trade mark right holders that may object to the application or that you could be infringing by using your brand.
Classes: When you apply to register a trade mark in the UK you have to specify the goods and services that you intend to use the brand for. These are organised into 45 different classes under the Nice classification system. Official trade mark application fees are charged on a per class basis. The UK Intellectual Property Office (IPO) accepts a broader list of goods and services than certain territories, such as the USA, so it is recommended to seek UK counsel input into a trade mark specification even if one has already been prepared and filed in another territory.
Application process: Once a UK application has been filed it will be examined by the UK IPO to ensure that it complies with various registration requirements. The IPO will also conduct a search of the IPO Register for earlier rights they consider to be similar to the mark applied for – the application will not be refused on this basis, but earlier right holders will be notified of the application and it will be for them to take action if they consider there to be a conflict. Assuming there are no major issues during examination, the application will be published for opposition purposes. If no oppositions are filed by third parties the application will proceed to registration and a certificate will be issued. For a straightforward application this process typically takes around four to six months.
Duration of Registration: UK registrations can be renewed every 10 years, for a fee, and can last indefinitely so long as they are used and renewed.
Priority: Once an initial trade mark application has been filed in (almost) any territory the filing date may be preserved for additional applications abroad provided those application are filed within six months. This ability to back-date later applications is known as 'claiming priority' and is useful as it allows time to see how the first application progresses before any investment is made in additional territories, as well as helping to stagger costs. The UK IPO accepts priority claims from earlier applications/registrations, and UK applications can be used as priority applications. Later applications can be made after the end of this priority period, but those later applications will simply be dated at the date of the application.
Marking: The trade mark registration symbol ® must only be used in the UK after a valid UK registration has been obtained. The TM symbol can be used to indicate a trade mark before an application is filed or while it is pending. This applies to use on products or packaging, as well as on a website directed at the UK. See further guidance note on e-commerce.
Other registrations: In the UK, neither simply registering your company name at Companies House nor owning the domain name for your website gives you rights to prevent others using your trade mark. Therefore, it is important that specific consideration of IP protection is given when launching in the UK.
Patents
What is protected? Patents can protect inventions which are not yet in the public domain. It is important to keep inventions secret and disclose them only under a Non-Disclosure Agreement in order to preserve the ability to patent them.
Requirements to be registered: Requirements for protection include that the invention is new, something that can be made or used, and not just a foreseeable modification to something already out there. The invention should not be made public before patent protection is sought (and, as set out below, an earlier application in a different country can be publication that prevents a later registration in the UK).
Territorial: Like trade mark protection, patent protection is territorial – so protection in one territory will not protect in another.
Infringement: You should undertake freedom to operate searches before launching an invention in the UK. This is the case even if you have already launched elsewhere (or you already have a patent registered elsewhere), as there may be different patents in the UK which are infringed by your invention.
Timing: Unlike trade mark protection, there is a limited period of time in which to select the countries in which you want to file a patent application. So, if you already have a patent in one territory, it may no longer be open to you to protect the same invention in the UK. Bespoke advice may be required here.
UK Patents: Patents can be registered through the UK IPO (which may be accessed through a European Patent Application (via the European Patent Office) or through an International Patent Application (via the World Intellectual Property Office). Once registered, patents can be renewed (on payment of renewal fees) for up to 20 years.
Designs
What is protected? Designs can protect the appearance, shape, configuration or decoration of the whole or part of a product. Requirements for protection include that the design is new, and creates a different overall impression to any earlier design already in the market. The design should not be made public before registration is sought.
Unregistered rights: Unregistered UK 'Design Rights' will arise automatically to protect certain shape and configuration (3D) designs. However, Design Rights provide less protection than Registered Designs and are of shorter duration (for the earlier of 10 years after it was first sold or 15 years after it was created). There are also EU Design Rights (Unregistered Community Designs (UCD)), which are of shorter duration again. UCDs existing before 1 January 2021 automatically retain UK protection as a continuing unregistered design, with protection continuing for the remainder of the three year term that attached to the UCD.
Registered Designs: Designs can be registered through the UK IPO. Before launching or applying to register a design it is advisable to conduct a clearance search. Once registered, designs can be renewed (on payment of renewal fees) every five years for up to 25 years. Since 1 January 2021, EU registered designs (Registered Community Designs (RCDs)) are no longer valid in the UK. Any RCD that existed prior to this date was automatically cloned to allow for comparable UK rights. The comparable right is a fully independent UK registered design capable of being assigned, renewed or challenged separately from the original RCD. By contrast, a comparable UK right was not created for any RCD application that was pending (i.e. not yet registered as an RCD) on 1 January 2021. Applicants in this position have a nine-month period (starting on 1 January 2021) within which they can apply for a comparable UK design right with the same filing, priority and/or UK seniority dates as their original RCD application.
Copyright
What is protected? Copyright can protect original literary, dramatic, musical and artistic work, as well as software and databases and audio/visual recordings.
Unregistered rights: Unlike trade marks, designs and patents, copyright in the UK cannot currently be registered (so there is no central register and no fee requirement). Copyright arises automatically in the UK as soon as certain requirements are met, including the need for the work to be written down or recorded.
Marking: It is best practice to mark original work with the copyright symbol ©, the name of the author/creator, and the date of creation – not least so (recognising that there is no register) third parties are put on notice that the work is protected by copyright and can trace the copyright owner.
International protection: The UK has signed various copyright treaties which allow the UK to provide copyright protection in respect of copyright protected in other signatory countries. If you have copyright outside the UK, those treaties may operate to provide automatic protection in the UK too.
Trade secrets
Trade secrets can protect business information such as recipes and customer lists. There is not a specific register for this. In the UK these can be protected under the common law of confidence, through keeping the information secret and through only disclosing to those that have signed non-disclosure agreements.
Managing your intellectual property
Audit: You should regularly take stock of your IP assets. This is called an ‘IP Audit’ and it will help in ensuring your IP protection is up-to-date. Burges Salmon can work with you in conducting an IP Audit, and can advise on the scope and status of your current IP portfolio, how it compares to what IP you actually have and use, what further enforceable IP rights you might have, and the best way to protect and enforce those rights.
Licensing and transfer of IP rights: IP rights can be very valuable intangible property assets. The rights can be licensed, transferred, sold, or used to secure investment. For certain IP rights, such as trade marks, it is best practice to record any such licences or transfers on the IPO Register. Please contact the Burges Salmon IP and Commercial teams to discuss your requirements regarding dealing with your IP. See also our note on Contracting Under English Law.
Enforcement: You may also wish to use your IP to enforce your rights against others.
How can Burges Salmon help?
Our highly-acclaimed intellectual property team have formidable expertise, which is acknowledged nationally and internationally. They cover a range of technical, scientific and commercial backgrounds and have an in-depth insight into many industry sectors having worked with multiple high profile global brands. For more information or if you have any questions, please contact the Burges Salmon IP team.