Brief Introduction to UK Intellectual Property Protection Rules

UK intellectual property protection rules

From January 1, 2021, all UK-based intellectual property proceedings, such as those concerning trademarks, patents, and designs, must provide an address for service within the UK (including Gibraltar and the Channel Islands). In other words, you can no longer rely solely on an agent in the European Economic Area (EEA); all proceedings must be conducted through a local agent. This UK address requirement also applies to European intellectual property titles issued in the UK.

Special Patent Mechanism - Accelerated Examination of Green Inventions

• Since 2009, if an invention has a positive impact on the environment, you can apply for accelerated procedures. Applicants must explain how their invention is environmentally friendly and indicate which stage of search, examination or publication they wish to accelerate.

Specialized remedies and courts

• Decisions of the UKIPO can be appealed to the Patents Court (a specialist tribunal within the High Court). The Patents Court is the first instance court for appeals against UKIPO decisions and for handling civil disputes relating to patents (infringement, invalidity, licensing, supplementary protection certificates, etc.).
• Small-scale intellectual property disputes involving small and medium-sized enterprises can be submitted to the Intellectual Property Enterprise Court (IPEC). This procedure is simpler, shorter, and less expensive than the Patent Court.

Preliminary opinion on patent or supplementary protection certificate (SPC)

• After submitting complete documents, the UK Intellectual Property Office may, upon request, issue a free preliminary opinion. This opinion may be issued after the initial examination or preliminary communication with the examiner. It aims to provide the applicant with information on the validity, novelty, inventive step of the patent, or, in the case of an SPC, on the admissibility and maximum term of the patent application, so that the applicant can amend or adjust the application documents.

Two types of protection systems for designs that do not require registration

• UK Unregistered Design Right : This refers to a specific design right that relates solely to the shape and structure of a three-dimensional product, such as packaging. Protection lasts for up to 10 years from the date of first creation, or 15 years from the date of first sale. During the final five years, the right holder must grant a license to the requesting party, a process known as a "compulsory license."
• Supplementary Unregistered Design Right: This right provides three years of protection for designs published in the UK. It applies to all types of products and protects the appearance of a product, including its shape, colour, texture, material and ornamentation.

Specific rules to be followed in trademark registration

• Evidence of Trademark Use: When applying to register a UK trademark, the IPO requires applicants to provide evidence of actual use, or a statement of intent to use.
• Two-stage examination system: Applicants can first pay half the fee and submit a "test" application. The IPO then issues an examination report, stating whether the trademark is valid. The applicant then decides whether to proceed. If the applicant decides to proceed, they must pay the remaining fee (slightly higher than the "standard" application fee) within 28 days of receiving the examination report. If the applicant withdraws, the fee is non-refundable.
• Series Trademark Applications: You can submit up to six similar trademarks in the same application. These trademarks differ only in non-distinctive elements and do not materially affect the overall recognizability of the trademark. For more than two trademarks, a surcharge of £50 will be required for each additional trademark. However, the deadline for serial trademark registration is the end of 2025.

Trade secrets

• In 2023, the UK enacted the National Security Act, introducing new criminal provisions to combat the misuse of trade secrets. Section 2 of the Act makes it an offence for a person to knowingly obtain, copy, record, retain, disclose, or provide access to a trade secret without authority, and in connection with a foreign power. The offence can occur within or outside the UK. If committed abroad, it only constitutes an offence if the trade secret is "UK subject matter."

Artificial intelligence regulations are under construction

• The UK plans to become a world leader in artificial intelligence by 2030. Its strategic priorities include: developing flexible regulations to support the rapid development of AI; promoting transparency in algorithms and technology; and emphasizing ethical guidance.
• In 2025, the UK government launched a consultation on the future of copyright in the context of the rise of artificial intelligence. One avenue of discussion was allowing, under certain circumstances, the use of copyrighted works for text and data mining (TDM) to train AI models without prior permission. This proposal remains highly controversial.

Passing Off Litigation: A lawsuit that can be enforced even without registered rights

• "Passing off" is a legal action under English common law, equivalent to an unfair competition action, used to prevent misleading product presentations. A successful claim requires proof of three elements:
  • Damage to goodwill or reputation
  • Misrepresentation or risk of confusion
  • The existence of damage
• This action can be brought without the need for registered rights and applies to all intellectual property rights (copyright, trademarks, designs, patents) and trade names. In the case of patents, this type of action is rarely used to challenge infringement unless the patent relates to goodwill associated with the way a product is presented.

While maintaining a high degree of consistency with European intellectual property rules, the UK has developed its own unique mechanisms. Foreign companies seeking to protect their assets in the UK should focus on:

• Appoint a local agent in the UK
• Ensure the trademark is actually used in the UK
• Make good use of supplementary tools such as "misuse" lawsuits and unregistered protection

Only by deeply understanding these rules can we effectively protect our creative achievements and enter the UK market with ease.