Absolute Grounds for Refusal: What Can and Cannot Be Registered as a Trade Mark

Not every name, logo, or sign can be registered as a trade mark. The Trade Marks Act 1994 sets out a number of grounds on which the IPO can refuse to register a mark. The most commonly encountered are the absolute grounds for refusal under Section 3(1) of the Act, and understanding these grounds is essential for any business owner considering a trade mark application.

Section 3(1)(a) provides that signs which do not satisfy the requirements of Section 1(1) of the Act cannot be registered. Section 1(1) defines a 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. If a sign is not capable of distinguishing your goods from those of your competitors, it cannot function as a trade mark and will be refused.

Section 3(1)(b) deals with trade marks that are devoid of any distinctive character. This is perhaps the most commonly raised objection. A mark will be considered devoid of distinctive character if it does not serve to identify the goods or services as originating from a particular undertaking. Examples include very simple geometric shapes like a plain circle, marks that appear to serve a merely decorative purpose, and slogans that are nothing more than ordinary promotional statements. A mark like “The ones you want to do business with” would likely fail this test because it is simply a description of customer-friendly business practices that could apply to any company.

Section 3(1)(c) excludes from registration trade marks which consist exclusively of signs or indications which may serve, in trade, to designate characteristics of goods or services. This includes marks that describe the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of the goods or services. For example, “TOP VALUE” for household goods would be objected to because it describes the value-for-money nature of the products.

Section 3(1)(d) covers signs which have become customary in the current language or in the bona fide and established practices of the trade. This applies to terms that may not have started out as descriptive but have come to be used generically within a particular industry. The examiner will need to point to evidence of such use to support this objection.

It is important to understand that these objections can overlap. A mark that is descriptive under Section 3(1)(c) may also be devoid of distinctive character under Section 3(1)(b), and the examiner may raise objections under both provisions. However, the factual basis for each objection should be clearly explained so that you know exactly what case you need to answer.

There are also additional absolute grounds that may apply in specific circumstances. Section 3(2) deals with shapes, preventing registration of shapes that result from the nature of the goods themselves, shapes necessary to obtain a technical result, or shapes that give substantial value to the goods. Section 3(3) covers marks that are contrary to public policy or morality, or that are deceptive. Section 3(5) deals with specially protected emblems such as Royal arms, national flags, and Olympic symbols.

The good news is that even if your mark faces an objection under Section 3(1)(b), (c), or (d), it may still be registered if you can show that it has acquired a distinctive character through use. This is known as acquired distinctiveness or factual distinctiveness. If you can demonstrate that, through extensive and consistent use of your mark before the date of your application, the relevant consumers have come to recognise it as identifying your goods or services, the objection can be overcome.

Proving acquired distinctiveness requires evidence, which typically includes details of how long the mark has been used, the turnover achieved under the mark, advertising expenditure, geographical extent of use, and any survey evidence or trade evidence supporting recognition of the mark. This evidence must show that the mark has acquired distinctiveness throughout the UK, not just in one region.

Understanding the absolute grounds for refusal is crucial when choosing a trade mark for your business. The stronger and more distinctive your mark is from the outset, the less likely it is to face objections and the easier it will be to enforce. Invented words, coined terms, and marks with no obvious connection to the goods or services they cover are inherently the strongest.