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IPR needs in the UK? Services now directly from Kolster

15.06.2022
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The United Kingdom is a market of 67 million people whose potential is worth tapping into, even though the island nation is no longer part of the European Union. Through Kolster, you can flexibly and cost-effectively protect your trademarks there, as well as take advantage of the local series mark.

Did you know that in the United Kingdom of Great Britain and Northern Ireland (UK), you can protect up to six variations of the same trademark with one application? You should not dismiss this lucrative market by assuming that the UK’s departure from the EU, i.e. Brexit, would make it more difficult to protect the IP rights of Finnish companies there.

However, it should be borne in mind that an EU trademark application no longer covers the UK. Protection must be applied for there by a separate application filed directly with the UK Trademark Office. A foreign applicant must use a local agent for the application, and Kolster now serves as such.

At Kolster, Finnish companies aiming for and already operating in the United Kingdom are tended to by a power team that understands the country’s IPR opportunities: Head of UK Operations, Service Manager Elina Ljungberg and IP Lawyer, European Trademark Attorney Anne Nyström. Ljungberg is responsible for preparing applications, while Nyström handles the related attorney work. Both have solid experience in all forms of protection as well as in the details of local trademark registration procedure. We also represent clients in opposition proceedings before the Office.

Our customers are able to handle their IPR matters even more comprehensively through us. Centralising services saves time, effort and money”, Ljungberg says.

Bona fide requirement in trademark registration

The costs of trademark registration process in the UK are roughly the same as when applying for protection in the Finnish market. However, the process may be faster than in the EU.

“When a customer contacts us, we can file a trademark application in the UK on the same or next day, if necessary. In a smooth case, the entire protection process might only take three to five months”, Ljungberg explains.

The peculiarities of UK trademark law include the so-called bona fide requirement.

“The applicant for registration must have a good faith (bona fide) intention to use the mark. Therefore, unlike in many other countries, you cannot apply for registration for a mark that you do not intend to use. If someone later questions the applicant’s bona fide intention to use the mark, a planned but cancelled product launch, for example, can be considered as an indication of good faith”, Nyström clarifies. This also emphasises the importance of recording all use and preparations to use a trademark in the UK and elsewhere.

Series mark provides comprehensive protection with one application

In most countries, trademark protection only applies to the trademark design for which protection has been sought. For example, if a black and white trademark is protected, protection must be obtained separately for a coloured mark. In the United Kingdom, a trademark can be granted extensive series mark protection with one application. This is useful for companies that have multiple variations of their trademark, such as different colour options.

“A series mark application can be used to apply for registration, for example, of a trademark or a logo that has various colour or font options. There can be up to six variations. A series mark application and registration is slightly more expensive than an individual application, but much cheaper than filing several separate trademark applications”, Nyström explains.

A series mark must mean, sound and look the same

A series mark, like a regular trademark, must be distinctive; that is, it must stand out on the market as the name of a product or service of a particular company. It cannot simply describe the product or service.

A series mark must also look and sound the same when assessed in relation to other marks in the series. Examples from the website of the UK Intellectual Property Office (UKIPO) illustrate this.

The coloured and black and white versions of the same mark can be understood as a series because they look the same and the difference in colour does not affect the recognisability of the mark.

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All three marks are a series because the differences between them are very minor. They all sound the same and mean the same.

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These two marks are not a series because they look fundamentally different.

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Pictures: The National Archives, https://www.nationalarchives.gov.uk

Contact us

Elina Ljungberg
Head of UK Operations, Service Manager, Senior IP Specialist
elina.ljungberg@kolster.com
+358 45 271 3448

Anne Nyström
IP Lawyer, European Trademark Attorney
anne.nystrom@kolster.com
+358 45 7820 1708