A registered trademark is a sign that distinguishes the goods or services of one business from those of another. It must be distinctive and not be identical or similar to an earlier registered mark relating to identical or similar goods/services. There are two types of registered trade mark that are enforceable in the UK: (i) UK registered trademarks and (ii) community trademarks (EUTMs). An EUTM is a unitary right that is enforceable throughout all the member states of the EU. A EUTM is also enforceable in Ireland. However, in addition, there is a separate Irish trademark registration system under which you can register an Irish trade mark enforceable only in Ireland.
In all of the above jurisdictions, trademarks are registered by way of classes of goods and services. Different goods and services fall into different classes (for example Class 9 covers publications and Class 36 covers financial services). A trademark application must also specify whether a word mark or a logo mark is applied for. It will also set out the classes for which the trade mark is being or will be used.
Matters which may affect the registerability of, or time it takes to register, a mark included
- the level of distinctiveness of the mark – if the mark is not distinctive (meaning it is not a generic/descriptive word relating to the goods and services) it could face objections from the relevant trademark office; and
- whether there are other identical or similar earlier marks registered – if such earlier trademarks are registered then the mark may face an objection either from the relevant trademark office (in the case of Ireland) or from the proprietor of the mark (in the case of Ireland, the UK and the Community);
Effect of Brexit on Registered Trademarks:
The UK system for protecting trademark rights is not affected by its decision to leave the EU. While the UK remains a full member of the EU then EUTMs continue to be valid in the UK. When the UK leaves the EU, an EUTM will continue to be valid in the remaining EU member states.
Post-Brexit, UK businesses will still be able to register an EUTM, which will cover all remaining EU Member States. In addition, the UK is a member of the international trade mark system called the Madrid System. This allows users to file one application, in one language, and pay one set of fees to protect trade marks in up to 113 territories including the EU. UK businesses will continue to have access to the Madrid System when looking to protect their trade marks.
However, uncertainty exists as to the validity, post-Brexit, of an EUTM in the UK.