4 Tips For Australian Businesses Searching For UK Trade Marks
As one of the world’s largest economies and one of Australia’s most important trading partners, the United Kingdom (UK) is a great place to do business. For example, in 2018-19, the UK was Australia’s seventh-largest trading partner. It is important that before you trade with the UK, you ensure you are not infringing on any intellectual property (IP) in the UK. This article will give you three tips for Australian businesses searching for UK trade marks.
Know the UK’s Trade Mark System
Before searching for UK trade marks, it can be useful to understand some of the UK’s basic trade mark rules and procedures. The UK’s trade mark system is very similar to Australia’s.
Once you have chosen your trade mark, you will need to apply to the UK Intellectual Property Office (IPO). Here, you will nominate the class of goods or services that you will use your trade mark for. You will then receive feedback on your trade mark application within 60 working days. This feedback will outline any issues with your trade mark that you need to respond to. Once you resolve any outstanding issues with your application, the IPO will publish your application online for third parties to dispute. If your trade mark application is successful, your trade mark will last for 10 years before you can renew it for further 10 year periods.
The UK’s exit from the European Union left questions about the status of trade marks registered with the European Union. However, these questions have been resolved. As of 1 January 2021, all trade marks registered as a European Union Trade Mark (EUTM) gained automatic UK equivalent rights. This was a free process and means that all EUTMs are now recorded on the UK trade mark register and have the same legal status as if they were under UK law.
Trade marks registered under the Madrid system have continued to extend to the UK following Brexit. The UK government worked closely with the World Intellectual Property Office (WIPO) to ensure that the transition period went smoothly.
Use the UK’s Search Tool
In the UK, the UK Intellectual property Office is responsible for all trade mark registrations. You can find a trade mark search tool to conduct a thorough trade mark search on their website. There are three trade mark search options on their website:
|Trade mark number||If you know the trade mark you want to look up, you can search by trade mark number. You will be able to search for domestic UK trade marks, UK trade marks registered with the European Union Intellectual Property Office (EUIPO), trade marks registered with the WIPO using the Madrid protocol, or international trade marks that designate the UK.|
|Owner||You can use this search function to search for trade marks that specific businesses or individuals own. You will need the owner’s name and postcode to do this search. However, it is important to note that this search tool only extends to trade marks filed with the UK’s Intellectual Property office and not international or EU trade marks.|
|Keyword, phrase, or image||This search function allows you to search for trade marks more generally. You will be able to search keywords that describe your trade mark to find any registered trade marks that are similar or identical to yours. There are also many ways to narrow this search function, such as by searching for all the words you have entered, any of the words you have entered or narrowing the search by trade mark classification and trade mark status.|
Conduct an International Trade Mark Search
The UK is a party to the Madrid System for international registration of trade marks. The Madrid System lets you file filing one trade mark application for registration in up to all 124 participating countries. Since the UK is a party to this system, the World Intellectual Property Organisation’s Global Brands Database is another useful search tool when conducting a trade mark search in the UK.
The Global Brands Data Base allows you to search for identical or similar words based on the class of goods and services. You can also filter by source, image, type, trade mark status, country of origin, and the year of the application.
Your intellectual property is the most important asset of your business. If you plan on trading in the UK, it is essential that you:
- understand the UK’s trade mark rules; and
- know how to use the UK’s trade mark search tool.
If you need assistance with conducting a trade mark search in the UK or making a trade mark application in the UK, get in touch with our experienced trade mark lawyers. Contact them on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
If you plan on trading in the UK, having a trade mark registered in the UK is a great way to protect your brand. A UK trade mark will prevent other businesses from ‘stealing’ your brand and making a profit off it. The trade mark registration process will also help you check if you are infringing on someone else’s trade mark.
You can register your trade mark in the UK by either applying directly to the UK Intellectual Property Office or applying through the World Intellectual Property Organisation (WIPO) using the Madrid Protocol. The Madrid Protocol is an international treaty that lets you apply for several international trade marks in one application.
The cost of applying for trade mark registration in the UK will depend on the method you use to apply for your trade mark and the number of classes of goods and services you are applying for. The cost of your trade mark application will also depend on if you apply online or via post.