UK

Planning is crucial to the safe transfer of an IP portfolio no matter the timescales involved. Minimise the impact on your business and resources with these five steps for recording change of ownership.

The need to file evidence of use can crop up in many cases and the requirement to show historic use can cause problems for businesses. Preparation is critical to success.

Owners of registered EU rights benefited from the automatic cloning of those rights onto the UK register at the end of the Brexit transition period, but pending rights were not similarly converted. Luke Portnow sets out the steps needed to be taken by 30 September to protect such marks in the UK.

Drinks companies have diversified their products and ranges, and implemented new strategies in response to changing consumer preferences and the impact of both Brexit and COVID-19. But, what do these factors mean for brands' IP strategies moving forward? 

It is crucial to act promptly when submitting objections (or oppositions) to challenge potentially conflicting trademark applications. But, what is the opposition procedure – and how can brand owners make best use of it to protect their trademarks? V

The UKIPO recently upheld an opposition by Cambridge University to a trademark application by Chadlington Brewery Limited, for the mark ‘Cambridge Blue’, claiming beers in Class 32. The decision offers a useful summary of the UK’s common law tort of ‘passing off’, says Luke Portnow.

It is good practice to monitor trademark registries for potentially infringing trademark applications. The challenge is in developing the right watching strategy to avoid being swamped with results. Trademark Attorney Vanessa Harrow offers some advice.

Brand name and trademark selection are often associated with navigating potential infringement and opposition risks. Nevertheless, the consideration of local linguistic and cultural sensitivities is also part of the process, and a recent social media spat reminds us that cultural appropriation is a strong element of this, explains UK Trademark Attorney Luke Portnow.

At the end of 2020, the UK government announced a change to the rules of representation before the UKIPO. New trademark, design and patent applications and contentious actions at the UKIPO now require a 'UK address for service' to be appointed.

Download our factsheet for an overview of registered and unregistered design rights in the UK and EU following Brexit, and our top tips for brand owners on building an effective design right strategy.

In many jurisdictions, such as the EU and UK, brand owners can file trademark applications without any requirements to file evidence of use of their chosen mark. That is not to say that the ability to provide proof of use is not important.

In 2018 kitchen cookware company Tefal applied to register its signature 'red dot' as a trademark in the UK. After appealing refusal, the application was recently rejected due to a lack of the fundamental element of distinctiveness, as Trainee Paralegal Megan Taylor explains.