Transferring Trade Marks and Domain Names to the UK
Prepared by: Ali Güden
One of the most crucial aspects businesses who are transferring their brand and/or platform to the UK must keep in mind is IP registration procedures. Trade marks are area-specific which means they are only protected wherever they are registered in. A business in Turkey who has registered its brand in Turkey is not able to protect its brand anywhere else in the world. Therefore, one of the first thing a business venturing into the UK must do is to apply for trade mark registration to receive the necessary protection for its brand.

Below, we have summarised the registration process for trade marks and domain names in the UK.

Protection of Trade Marks in the UK

The UK trade mark regime is predominantly governed by the Trade Marks Act 1994, and is largely harmonised the EU trade mark law. Upon correct registration in the UK, a trademark is defined under Section 1 and protected under section 2 of the Trade Marks Act 1994 (''TMA 1994''). Under Section 1 of TMA 1994 defines trade mark as; "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings." The Act provides the owner of the trade mark with rights and remedies to benefit them in potential infringement cases. To successfully register a trademark, a proprietor must make an application to the United Kingdom Intellectual Property Office (''UKIPO'').

Pre-Application Process of a Trade Mark

Before applying to the UKIPO to register a trade mark, a proprietor must first check whether the trade mark in question can indeed be registered in the UK. Two conditions must be satisfied:

Ø The trade mark must be unique and must not fall under the grounds of refusal for registration listed in section 3 of TMA 1994; and

Ø The trade mark must not be substantially similar to an already registered trade mark for the same or similar goods or services. The trademarks database must be searched to verify this.

If a similar trade mark for the same or similar goods or services is found, the proprietor must contact the owner of the registered trade mark to try and obtain a letter of consent. This letter must then be attached to the IPO application.

It is also possible to make a 'series application' of up to six marks if the proprietor wishes to register similar versions of the same trade mark.

Once the proprietor completes the trademarks database search and, if necessary, obtains a letter of consent from a previously registered owner, the trade mark in question must then be matched with the correct class of goods and/or services the trade mark relates to.

The classification system used by the IPO is a universal 45-class system called the Nice Classification which provides a detailed list of goods and services as well as brief explanations of each class. The proprietor must complete a UK trade marks class search to classify the goods and/or services the trade mark in question relates to. Once a class of goods and/or services is indicated on an application which has been sent, an extra class cannot be added unless the proprietor sends in a new application. Therefore, it is crucial to think about how the brand might evolve over the next few years as well as what it involves at the time of application. Each application fee includes the cost of one class; adding extra classes to the application costs £50 per class.

Application and Registration

The total process of applying to register a trade mark and the registration of that trade mark takes around four months provided that there are no opposing parties.

There are two online application routes: standard application and Right Start application. A standard application costs £170 plus £50 per additional class added to the application and does not provide any feedback as to whether the application is made correctly; the proprietor bares the risk of submitting a wrong application and potentially being rejected. A Right Start application, on the other hand, provides an 'examination report' within eight weeks (or 40 working days) of submitting which then allows the applicant two months to resolve any problems with their application and resubmit. This costs £200 plus £50 per additional class added to the application. There is also the option to fill out the paper forms and submit the application by post which costs the same as the Right Start application.
Once the application is successfully submitted, it is published in the trade marks journal for a period of two months so that interested parties are able to oppose to it. If opposed, the proprietor has the option to withdraw their application, talk to the opposing party, or defend their application. Legal advice is recommended if defending the application, and it can be quite costly to go through court proceedings.

If not opposed, the trade mark will be registered successfully which is evidenced by the issuing of a registration certificate. The owner of the trade mark will be able to object to similar trade mark applications, and sell, market, license, and mortgage the trade mark at will. It should be noted, however, that a trade mark may be revoked if it is unused for five years, and the proprietor will be obliged to report any changes to their name, address, and e-mail during the period of ownership.

Another obligation the proprietor will have is to pay renewal fees. A trade mark must be renewed every 10 years if it is still in use; this can be done between the last six months before the expiration and the first six months after. Note, however, that a late renewal fee of £50 is added if the trade mark is renewed within the first six months after expiration on top of the regular renewal fee of £200 plus £50 per each added class.

Unregistered Trade Marks

A brand does not have to be registered as a trade mark necessarily. Persons using trademarks similar to the proprietor's may be stopped using passing off. The proprietor must prove the following to prove passing off:

Ø The mark is indeed the proprietor's;

Ø The proprietor has built up goodwill associated with the mark; and

Ø The proprietor has been harmed in some way due to the passing off.

While it is possible to claim a brand or a mark this way, trade mark registration provides a significant amount of protection to the proprietor. Proving passing off is also much more difficult than proving breach of IP rights, and it can be quite more costly as well.

Domain Names

A domain name is the name a brand uses on the internet, most commonly on its website. While domain names can be crucial to a brand's online presence and goodwill, they are not a type of intellectual property, and cannot be registered as such. Consequently, being the owner of a trade mark does not automatically entitle a proprietor to use that mark as their domain name. If another person or legal entity is already using the domain name the proprietor was looking to register, there is nothing that the proprietor can do to challenge this unless the current user is proved to be using the domain name unlawfully or maliciously.

Online domain name registrars make it significantly easy, quick, and cost-effective to register domain names. In exchange for a small fee, a domain name may be registered and ready to use within as little as 48 hours. The most important aspect of a domain registration is to check the domain contract. A proprietor must ensure that they are the actual owner of the domain name rather than the registrar; clauses which give the registrar the right to revoke or change the domain name for no apparent reason must be cautioned against. The Internet Corporation for Assigned Name and Numbers provides a list of accredited and accreditation-qualified registrars which is a safe place to start when looking to register a domain name.

In short, while trade mark and domain name registration procedures in the UK seem straightforward, businesses must take extra care when it comes to preparing their brand for the future and registration timeframes. The process may also become more complicated if any of the intellectual properties trying to be registered is contested. Expert legal advice may be needed to assist businesses with these complex issues.

Guden International has highly trained legal professionals who have expert knowledge in the area of IP registration both in Turkey and the UK. If you are a business in need of intellectual property advice, please feel free to reach us by filling out our 'Contact Form' or emailing us on

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