Trade Mark Resources

Jane Lambert

Over the years, I have written a lot of articles about trade mark law, but I had never organized them in any way until now.  Earlier this afternoon, I compiled a resource page for trade marks similar to the one that I have created for patents.   It can be accessed by clicking "Trade Marks" in the "Basic Information" panel to the right of the page.

"Trade Marks"  discusses registered and unregistered marks in all jurisdictions.  Supplementing it are the "FAQ", an index page to some short articles that I called "Auntie Jane's Trade Mark Tips" and introductions to UK and EU trade mark law.

I mention registration of trade marks, the rights conferred by registration, examination, opposition and certification and collective marks.

Anyone requiring further information may call me on +44 (0)20 7404 5252 during normal UK office hours or send me a message through my contact form. 

Applying for Trade Marks in Bad Faith

Piccadilly Circus at Night

Author Jimmy Baikovicius Licence CC BY-SA 2.0 Source Wikimedia Commons

Jane Lambert

One of the grounds on which a trade mark registration can be revoked is "that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use" (s.46 (1) (a) of the Trade Marks Act 1994). Another is that "such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use" (s.46 (1) (b)).

Those provisions mitigate the abuse that Lord Kitchin identified in para [4] of his judgment in SkyKick UK Ltd and another v Sky Ltd and others [2024] UKSC 36, [2025] Bus LR 251 "where a person applies to register a mark without having made any use of it and without intending to use it in the course of trade in relation to the goods or services for which protection is sought."  The only problem is that a party objecting to such a registration had to wait 5 years before he or she could apply for the revocation of the registration.

As a result of the Supreme Court's judgment in that appeal, there is now another option. An application to register a trade mark may be opposed under s.3 (6) on the ground that the applicant does not intend to use the mark for all the goods or services in respect of which registration is sought.  A new Practice Amendment Notice (PAN 1/25) was published on 27 Jun 2025 providing guidance for applicants, examiners and opponents following that judgment.

Para 9 of PAN 1/25 requires applicants to act in good faith. They should use the registration procedure in the manner and for the purpose for which it is intended. The notice continues:

"It is, in the first instance, for applicants to satisfy themselves that they are acting in good faith. Given the Supreme Court’s guidance, a good faith filing will likely not be achieved by filing without an intention to use. That also applies to the use of general terms covering multitude of sub-categories, where intended use covers only one (or some) of those sub-categories"

Applicants should be cautious about filing claims covering vast numbers of goods and services in large numbers of classes. Caution should also be applied when the terms used to describe the listed goods/services are themselves broad.

The notice states that up to now, examiners have not routinely raised bad faith objections to overbroad specifications.  That is about to change. When examining applications (including international registrations designating the UK), examiners will consider whether the specification is so manifestly and self-evidently broad that a bad faith objection should be raised.  If an examiner raises an objection, the applicant will be allowed 2 months to provide an explanation for the specification.

Those unfamiliar with the Supreme Court's judgment should consult my case note, The Supreme Court's Judgment in SkyKick v Sky, which I posted to NIPC Law on 19 Dec 2024.   Anyone wishing to discuss this article or my case note may call me on +44 (0)20 7404 5252 during UK office hours, or send me a message through my contact form at any time.

UDRP: Responding to a Complaint

Author CyberGhostface Licence Out of copyright Source Wikimedia Commons

  

Jane Lambert

Over the last few days, I have been writing about the Uniform Domain Name Dispute Resolution Policy ("UDRP"),  The UDRP is an alternative dispute resolution procedure for resolving disputes between brand owners and domain name holders over the right to register a domain name,  As I said in The Terms that are incorporated into every Agreement to register a Domain Name on 30 Oct 2022, it works because an agreement to refer such disputes to the UDRP is incorporated into every agreement for the registration of a generic top-level domain name.

On 2 Nov 2022, I discussed how a brand owner can claim the transfer or cancellation of the registration of a domain name that is identical or confusingly similar to its trade mark or trade name in  Complaints under the UDRP.  In the last paragraph of that article, I promised to discuss how a domain name holder should respond to such a complaint in my next post.   As it happens, I discussed that topic in Defending your Domain Name in the UDRP which appeared in NIPC Law on 28 Nov 2015.

Even though that article is nearly 7 years old it is still relevant.  It requires updating in only two respects.  The first is that WIPO Overview 2.0 which I mentioned in the "Essential Reading" paragraph has now been superseded by WIPO Overview 3.0.   The second is that it is very difficult to challenge the decision of a UDRP panellist in the English courts (see Yoyo.email Ltd v Royal Bank of Scotland Group Plc and others [2015] EWHC 3509 (Ch) (2 Dec 2015) and  Ross v Playboy Enterprises International, Inc [2016] EWHC 1379 (IPEC) (13 June 2016)).

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.

The Terms that are incorporated into every Agreement to register a Domain Name

 

Jane Lambert

One of the reasons why the internet works as well as it does is that there is a fast and relatively inexpensive procedure for resolving disputes between brand owners and domain name holders.  That procedure is contained in a document called the Uniform Domain Name Dispute Resolution Policy ("UDRP"). The UDRP is incorporated by reference into every agreement for the registration of a generic, and many country-code, top-level domain names.  Domain names ending in ".com", ".org" or ".biz" are examples of generic top-level domains ("gTLD"). Domain names ending in a two-letter country code such as ".nu" (Niue). ".tv" (Tuvalu) or ".ws" (Samoa) are country code top-level domains ("ccTLD").

The UDRP is incorporated into domain name registration agreements upon the insistence of a not-for-profit California company called the Internet Corporation for Assigned Names and Numbers ("ICANN").  ICANN was established at the behest of the United States government to regulate the allocation of domain names.   ICANN subcontracts the registration of gTLD to businesses known as "registrars" and ccTLD to national domain name registration authorities.  One of the terms of ICANN's agreements with those registrars and authorities is that the registrar or authority will incorporate the UDRP into every agreement for the registration of a domain name that it enters with a third party. 

Para 1 of the Policy states that the UDRP's purpose is to set forth the terms and conditions in connection with a dispute between the domain name holder and brand owner over the registration and use of an internet domain name.  In the Policy the pronouns "we" and "us" refer to the registrar or other authority and "you" to the person registering, maintaining or renewing a domain name.

An important but frequently overlooked provision of the Policy is para 2 which sets out the representations and warranties that every person seeking to register, maintain or renew a domain name makes to the registrar or other authority.  It will be recalled that a representation is an assertion as to a fact, true on the date the representation is made, that is given to induce another party to enter into a contract or take some other action and a warranty is a promise of indemnity if the assertion is false.  These representations and warranties are as follows:

"(a)    the statements that you made in your Registration Agreement are complete and accurate; 

(b)    to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; 

(c)    you are not registering the domain name for an unlawful purpose; and 

(d) you will not knowingly use the domain name in violation of any applicable laws or regulations."

It is the responsibility of the person seeking registration, maintenance or renewal of the domain name to determine whether the domain name registration infringes or violates someone else's rights.  It will be appreciated that these are onerous obligations.

Para 3 of the Policy sets out the circumstances in which a registrar or other authority may cancel, transfer or otherwise make changes to a domain name registration.   These include "receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy".  

Para 4 sets out "the type of disputes for which you are required to submit to a mandatory administrative proceeding."  Subpara (a) provides:

"Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present."

Para 4 states that those proceedings will be conducted before one of the following administrative-dispute-resolution service providers:

• Arab Center for Domain Name Dispute Resolution 
• Asian Domain Name Dispute Resolution Centre
• Canadian International Dispute Resolution Centre
• The Czech Arbitration Court Centre for Internet Disputes
• National Arbitration Forum, and
• World Intellectual Property Organization ("WIPO").

Each of those service providers has a list of panellists who will decide the dispute on the documents that the parties submit to them.   Those documents will always include a complaint and exhibits known as annexures from the brand owner.  Sometimes there will be a response from the domain name holder.  After receiving the complaint and any response that may have been filed the service provider will appoint a member of its panel to determine the dispute as a sole panellist.  If the respondent pays an additional fee each of the parties may choose a panellist for a three-member panel.

Most panellists are lawyers specializing in intellectual property or patent or trade mark attorneys.  I have served on the WIPO panel for nearly 20 years.  I have also drafted complaints for trade mark owners and responses for domain name holders.  Complaints and responses are submitted on online forms.   In the next and subsequent articles, I will discuss how to complete the complaint or response in a way that is likely to appeal to a panel. I will also warn of the sort of submissions that are likely to infuriate the panel. Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 or send me a message through my contact page. 

Auntie Jane's Trade Mark Tips: No. 1 - The Very Basics

Jane Lambert

If you really were born yesterday and you are not just wet behind the ears but positively soaking, you may find these animations helpful.

The first is called "Trademarks" and was published by the World Intellectual Property Organization ("the WIPO"), the specialist agency of the United Nations responsible for intellectual property, and Indecopi of Peru, with funding from South Korea.  It is about trade mark law generally and is not country specific.

By the way, we usually spell "trade mark" as two separate words in the United Kingdom and most other Commonwealth countries contrary to what the spell checks try to tell you.  Americans combine "trade" and "mark" into just one word.


Standard YouTube Licence

I hope you enjoyed that film.  Another that you may like, which is also published by the WIPO with South Korean help, is "Porro and his Friends create a Trade Mark".

Now, here is an animation from our very own Intellectual Property Office ("IPO") in Newport called "IP Basics: Should I get a Trade Mark?" The IPO's video summarizes the law here.

Standard YouTube Licence

You should be ready for my articles, "Brands" and "Trade Marks" as well as the IPO's guidance "Apply to register a Trade Mark".

If you have made it this far, you deserve a treat.  Ballet Cymru is another famous institution based in Newport.  Click this link to see those beautiful young dancers perform TIR to the mellifluous voice of Cerys Matthews.

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.