UK Trade Marks Manual Details Examination Procedures and Legal Framework Post-Brexit

The UK Intellectual Property Office (UK IPO) has released a comprehensive examination guide for trade mark applications under the Trade Marks Act 1994, which remains largely derived from EU Directive 2015/2436. This legislation is now classified as assimilated law under section 2 of the European Union (Withdrawal) Act 2018, meaning that case law from the Court of Justice of the European Union (CJEU) and the General Court issued before 1 January 2021 continues to be binding on the registrar as assimilated EU case law under section 6 of the Withdrawal Act.

The guide consolidates judgements and decisions from multiple sources, including the CJEU, the General Court, UK courts, and Appointed Persons, who are experienced intellectual property law practitioners appointed by the Lord Chancellor to serve as an appeals tribunal for UK IPO decisions. While Appointed Persons’ decisions are final with no further appeal, they provide authoritative guidance on trade mark law.

Registry practice, as outlined in the guide, reflects current law but is not rigid. The manual stresses that each trade mark application must be assessed on its own merits, allowing examiners discretion to depart from usual practice when justified by the particular circumstances. This principle was underscored by Appointed Person Simon Thorley QC in the Henkel KGaA appeal (BL 0/152/01), where he stated that registry practice serves as a guideline rather than an absolute rule, and that decision-makers must approach each case based on its facts.

Where examiners deviate from established practice, the reasons must be documented on the application file, either in internal notes or hearing records. The guide aims to assist examiners by providing clear procedures for examining marks, indicating when objections should be raised, and suggesting ways to overcome objections, including the submission of evidence.

The examination of marks for acceptability under the Trade Marks Act 1994 must be conducted with reference to the Act’s provisions, existing practice, and relevant judicial decisions. While CJEU case law issued before 2021 remains binding, judgments from the CJEU after that date are not binding but may still be considered persuasive.

UK courts, including the Supreme Court, the High Court of Justiciary in Scotland, and appellate courts such as the Court of Appeal, are not bound to follow assimilated EU case law and may depart from it. Decisions made by these courts on this basis are binding on the registrar. However, such decisions are only binding on the Office for the specific case and are otherwise persuasive for similar cases.

The guide also clarifies the limited binding effect of decisions from other national courts or tribunals outside the UK. Although decisions from EU member state courts may have persuasive value in interpreting EU-derived domestic legislation, they are not binding on the UK registrar. This principle was affirmed by Laddie J. in Wagamama [1996] FSR 716, emphasizing that English courts should not follow foreign courts simply because they reached a view first.

Practice Amendment Notices (PANs) are internal UK IPO guidelines that update or clarify examination practice. These notices are published on the UK IPO website to inform practitioners and the public.

Overall, the examination guide serves as a vital resource for trade mark examiners, balancing adherence to established legal frameworks with the flexibility necessary to address evolving circumstances and ensure fair and consistent trade mark registration decisions in the UK’s post-Brexit legal environment.