In order for a trademark to be protected in Scotland, the trademark must be registered in the United Kingdom.
The United Kingdom is a member of the European Union, thus European Union Trademarks (EUTM) are protected in this jurisdiction. Therefore, trademark protection in the United Kingdom can be obtained either by registering a European Union trademark that is also valid in all the other European Union member countries, or by registering locally through the United Kingdom Intellectual Property Office (UKIPO).
The United Kingdom is also a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.
The United Kingdom is a “first-to-file” jurisdiction, which means that except in some specific cases, the rights to a trademark are granted to the first person to file it, not the first person to use it.
It is not necessary for a trademark to have been used in order for it to register. However, previous effective use of the trademark may be useful to help overcome eventual objections raised on the grounds of lack of distinctiveness.
If a trademark has not been used in the five years following its registration, it will become vulnerable to cancellation actions based on non-use of the mark.
Once the trademark application has been examined by the Intellectual Property Office and if no objections are issued, the application will be published for a period of two (2) months, during which third parties can file oppositions against it.
A trademark is registered for an initial period of 10 years starting from the date of filing of the application, after which it can be renewed for periods of 10 years. The renewal request can be filed starting 6 months before the expiration date, and until 6 months after the expiration date. In case the renewal is filed after the expiration date, extra costs will apply.
If you register a combined trademark (which includes both word elements and figurative elements) in the United Kingdom, the exclusive right to use the trademark is limited to a use of the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
A trademark cannot be registered if it includes the image of a crown or representations of members of the Royal family.