How U.S. Trademark Holders Secure Trademark Protection in the UK

Published On - November 1, 2024

Evans Fox LLP General Business, Trademark

How a U.S. Trademark Holder Can Secure Trademark Protection in the UK

Expanding your business internationally is an exciting milestone, but it also comes with the responsibility of protecting your brand in new markets. For U.S. trademark holders looking to enter the United Kingdom, securing a UK trademark is a crucial step in safeguarding your brand’s identity and preventing others from capitalizing on your success. Here’s a guide on how a U.S. trademark holder can obtain trademark protection in the UK.

1. Understanding the Importance of International Trademark Protection

A trademark registered in the United States only provides protection within the U.S. borders. If your business plans to expand into the UK, or if your products or services are sold there, you need to secure trademark protection in the UK to prevent others from using your brand without permission. Without a UK trademark, you risk others registering your brand name, logo, or other trademarks, which could lead to legal disputes, loss of brand reputation, and financial losses. Securing a trademark in the UK ensures you have the legal authority to prevent others from using your trademark and gives you the exclusive right to use it in connection with your goods or services in that market.

2. Methods of Securing a UK Trademark

There are two primary ways a U.S. trademark holder can secure a trademark in the UK:

  • Filing Directly with the UK Intellectual Property Office (UKIPO)
  • Using the Madrid System for International Registration

One of the most straightforward methods for U.S. trademark holders is to apply directly with the UK Intellectual Property Office (UKIPO). This involves steps similar to those in the US trademark registration process but may require hiring a UK trademark attorney. The UK offers a “fast track” service to expedite the process for additional fees.

Another route is to use the Madrid System, which is administered by the World Intellectual Property Organization (WIPO). The Madrid System allows trademark holders to seek protection in multiple countries (simultaneously or separately), including the UK, through a single application filed in the United States Patent and Trademark Office. This option is available if you already have a registered trademark (or a pending application) in the U.S., known as the “base trademark.” The international application is filed through the United States Patent and Trademark Office (USPTO), which will forward it to WIPO. In this application, you can designate the UK, among other countries, where you seek protection. WIPO examines the application to ensure it complies with the formal requirements. If the application is in order, WIPO will publish it in the International Register and notify the UKIPO. The UKIPO will then examine the trademark according to its national laws. If the trademark meets the necessary criteria and no opposition is filed, it will be registered in the UK, and your protection will be granted.

3. Key Considerations When Registering a Trademark in the UK

  • Brexit Implications: With the UK’s departure from the European Union, EU trademarks no longer provide protection in the UK. If you previously relied on an EU trademark for UK protection, you now need a separate UK registration.
  • Differences in Trademark Law: While U.S. and UK trademark laws are similar, there are some differences. For example, in the UK, you must show that the trademark is distinctive and not descriptive of the goods or services. Working with a trademark attorney familiar with UK law can help navigate these nuances.
  • Ongoing Maintenance: Once your trademark is registered in the UK, it’s important to monitor its use and enforce your rights if necessary. Additionally, trademarks in the UK need to be renewed every 10 years to maintain protection.

4. Conclusion

Securing a UK trademark is a vital step for any U.S. business expanding into the UK market. Whether you choose to file directly with the UKIPO or use the Madrid System for International Registration, the process requires careful planning and attention to detail. By protecting your trademark in the UK, you ensure that your brand is safeguarded in one of the world’s most important markets, allowing your business to grow and thrive without the threat of infringement.

For specific legal advice tailored to your situation, consulting with a trademark attorney who specializes in international trademark law is highly recommended. If you are doing business in the United Kingdom, or plan to in in the coming year, contact our office if you’d like to evaluate if a UK mark is right for your business. We can protect this important market against counterfeiters and others seeking to take illicit advantage of your brand reputation in the UK.

Tracy Jong is a Senior attorney at Evans Fox LLP with 30 years of experience focusing her practice in business law, intellectual property and licensing for alcohol and cannabis. Tracy Jong is a member of the New York Bar and is a registered attorney at the United States Patent and Trademark Office. She can be reached at [email protected].

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The content has been prepared for informational purposes only; it should not be construed as legal advice, does not create or constitute an attorney-client relationship, and readers should not act upon it without seeking professional counsel.