UK Trademark Examination: Procedures and Common Objections

After you file a UK trademark application, it undergoes examination by the Intellectual Property Office. The examination phase checks whether your mark meets legal requirements for registration. Understanding this process and the common objections can help you anticipate issues and address them effectively.

What Does the Examiner Check?

The UKIPO examiner reviews the application before publication to ensure the mark is registrable. The main focus is on absolute grounds—the qualities of the mark itself. The examiner will ask: Is this sign capable of being a trademark? Is it distinctive for the goods/services, or is it something others may need to use (descriptive or generic)? Key aspects of the examination include:

• Formalities and Classification

The examiner confirms that the application is in order administratively. For example, they verify the goods/services are properly classified and clearly described. If your specification is too vague or uses incorrect classes, an objection may be raised (you might be asked to clarify terms or move items to the correct class).

• Absolute Grounds (Sections 3(1) – 3(4) of the Act)

These grounds relate to the inherent acceptability of the mark. The majority of examination efforts concentrate here. The law provides that certain types of marks must be refused, including:

• Marks that cannot function as a trademark (e.g., not a “sign” capable of graphic representation).
• Marks lack any distinctive character and are too generic or banal to distinguish goods.
• The marks are exclusively descriptive of the goods/services.
• These marks have become customary in the trade.
• Marks that fall into prohibited categories are prohibited.

• Relative Grounds (Section 5)

The examiner also performs a search for earlier trademarks that might conflict. Since 2007, a conflict does not automatically bar your application. Instead, the UK Intellectual Property Office (UKIPO) notifies the owners of earlier marks, who then have the option to oppose your application after it is published. The examiner’s search identifies risks but does not stop your application unless opposition follows.

Common Absolute Grounds Objections

1. Not a “Trade Mark” (Section 3(1)(a))

This arises when the filing does not constitute a “sign” capable of representing and distinguishing goods. An example was Dyson’s application, where Dyson attempted to register the concept of a transparent vacuum cleaner bin; this was held to be a vague idea, not a specific sign. Non-traditional marks (sounds, colours, holograms) may face this objection if the representation is unclear or imprecise.

2. Lack of Distinctive Character (Section 3(1)(b))

The most common objection. The mark is considered incapable of distinguishing your goods/services. Examples include:

• The text consists of single letters or digits without any stylisation.
• There are simple slogans or promotional phrases such as “We Deliver Quality”.
• Basic geometric shapes.
• Surnames are considered very common unless they are accompanied by stylisation or specific usage.

Marks must act as a badge of origin. Arguments and acquired distinctiveness can overcome many objections.

3. Descriptive Marks (Section 3(1)(c))

Marks consisting solely of terms describing the goods/services or their characteristics are refused. Examples:

• “Fast Dry” for paint.
• “London Tours” provides tour services in London.
• “Sweet Treats” for candy.
• Geographic indicators such as “Colombian Coffee” are used to identify coffee.

Case law states that if any meaning of the mark describes any of the goods/services, it must be denied. For example, “Doublemint” was rejected because “it” describes a characteristic of chewing gum. Unusual combinations of words may succeed, as demonstrated in “Baby-Dry”, but typical descriptive terms, even in foreign languages, will not.

4. Generic or Common Terms (Section 3(1)(d))

Marks consisting of terms customary in language or trade cannot be registered. Examples include once-distinctive terms that became generic (e.g., “cellophane” and “escalator”). This objection is less common for new filings but is relevant for invalidation.

5. Prohibited or Misleading Marks (Sections 3(2)–3(6))

• Shapes and Functional Marks (3(2)): Functional or value-adding shapes cannot be monopolised.
• Offensive Marks (3)(a): Marks considered grossly offensive or contrary to morality are refused.
• Deceptive Marks (3(3)(b)): Marks likely to mislead the public are refused (e.g., “ORGANIC GREEN” for non-organic goods).
• Restricted Emblems (Section 4): National flags, royal emblems, hallmarks, Olympic symbols, etc., are protected and require consent where allowed.
• Bad Faith (Section 3(6)): Rare at examination but applies if a filing appears dishonest, such as attempting to register a well-known foreign brand with no connection.

Responding to an Objection

If the examiner raises issues, an Examination Report is issued. You typically have two months (extendable) to respond.

• Argue Distinctiveness

You may argue that the mark is distinctive or that the examiner has misinterpreted its meaning. Explain unusual or imaginative aspects of the mark. Reference case law principles where appropriate.

• Provide Evidence of Acquired Distinctiveness

Submit evidence showing the mark has become distinctive through use: advertising, turnover, duration of use, surveys, etc.

• Narrow the Specification or Add Disclaimers

You may limit your goods/services or disclaim non-distinctive elements. Disclaimers are more typical in composite marks.

• Alteration (Rarely Allowed)

Marks generally cannot be changed after filing, except for very minor adjustments that do not affect identity.

• Addressing Deception or Protected Symbols

You may need to amend the mark or provide consent if symbols, geographic claims, or protected elements cause objections.

Publication and Opposition

If all objections are cleared, the application is published for a two-month (extendable) opposition period. Third parties may oppose on absolute or relative grounds. After resolving any opposition, your mark proceeds to registration.

Key Takeaways

• Examination protects public interest by keeping descriptive and generic terms free.
• Many marks receive initial objections, especially descriptive ones.
• Strong responses and evidence can overcome objections.
• Even after examination, opposition remains possible.
• Understanding the process helps you secure a stronger, more defensible trademark.

If you have any questions about this article, please contact us at tmr@trademarkroom.com