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Registering a trademark isn’t simply a matter of submitting a name, logo or other sign to the UK Intellectual Property Office (UKIPO). Before a mark can proceed towards registration, it must be examined to determine whether it satisfies the legal requirements of the Trade Marks Act 1994. The UKIPO Trademarks Manual provides guidance on this sort of examination process, drawing on legislation, court judgments and decisions of relevant tribunals. More importantly, the manual is intended as guidance rather than a rigid set of rules, since each application must ultimately be considered according to its individual circumstances.
Sources of legal authority
The examination of trademarks is influenced by several sources of legal authority. These include decisions of the Court of Justice of the European Union (CJEU), the General Court, UK courts, and Appointed Persons. The manual explains that these decisions help to establish and interpret the principles applied by the Registry. While some decisions are binding and others are persuasive, they provide an important framework for ensuring that similar cases are approached consistently.
The current UKIPO guidance likewise explains that examination must be carried out by reference to the Trademarks Act 1994 while taking account of relevant judicial decisions and established practice.
The examination process and absolute grounds
A central part of examination concerns the absolute grounds for refusal under section 3 of the Trade Marks Act 1994. These grounds concern problems inherent in the mark itself, rather than conflicts with an existing trademark. They include marks that cannot distinguish goods or services, marks that are non-distinctive, descriptive, or customary in trade, as well as certain shape, deceptive, prohibited, and bad-faith applications.
This is different from the relative grounds under section 5, which concern earlier rights and potential conflicts with existing trademarks. This distinction matters because a mark can be inherently registrable but still face issues because of an earlier right.
The importance of distinctiveness
At the heart of trademark registration is the requirement that a mark can distinguish the goods or services of one undertaking from those of other undertakings. In other words, a trademark must be capable of functioning as an indicator of commercial origin.
Section 3 (1) (b) therefore prevents registration of marks that are devoid of distinctive character. A mark may fail this because this test is where consumers would not perceive it as identifying one particular business. Promotional statements and other expressions commonly used in ordinary commercial communication can fall within this category.
The assessment is not necessarily limited to how a mark looks in isolation. The UKIPO considers how the mark would be encountered in normal commercial circumstances and in relation to the goods and services claimed.
Descriptive and customary marks
Section 3 (1) (c) addresses marks which consist exclusively of signs or indications capable of designating characteristics of the relevant goods or services. These characteristics can include matters such as quality, quantity, intended purpose, geographical origin or other characteristics.
For instance, a term describing the nature of characteristics of a product is unlikely to be available for registration because other traders may legitimately need to use that term during their business. The manual also makes it clear that a mark does not have to be currently used descriptively to attract an objection, and it may be sufficient that it is reasonably capable of being used in that way.
Section 3 (1) (d) concerns signs which have become customary in the current language or in established practices of the trade. Examples discussed in the Manual include common names or symbols associated with goods or services. Such signs are unlikely to perform the essential function of distinguishing one undertaking from another.
Context and partial refusals
Importantly, a mark is not necessarily refused for every good or service simply because an objection applies to some of them. The UKIPO considers the relationship between the mark and the specific goods or services listed in the application. If an objection only applied to part of the specification, the applicant may be able to restrict the goods or services so that the objectionable categories are removed.
This demonstrates why drafting the specification carefully is an important part of the application process. A broad specification may create unnecessary difficulties, whereas a suitably restricted specification can sometimes allow the application to proceed.
Deceptive marks and other practical considerations
The manual also deals with marks which may deceive the public under section 3 (3) (b), particularly in relation to the nature, quality or geographical origin of goods or services. An objection should not be based on a merely theoretical possibility of deception. Rather, there must be actual deceit or a sufficiently serious risk which consumers will be misled.
Geographical terms can therefore present difficulties where a place has a reputation or association with goods. In some circumstances, an objection can be overcome by restricting the specification so that the goods genuinely possess the relevant geographical connection. Similar principles apply where a mark suggests a particular quality or material which the goods do not possess.
The manual also provides practical guidance on less conventional applications, including animal devices, cartoon characters, company names and domain names. These examples show that the same sign can have different registrability outcomes depending on the goods or services for which registration is sought. A representation of an animal, for instance, may be descriptive or decorative in one context but distinctive in another.
Acquired distinctiveness through use
Not every mark which initially appears non-distinctive or descriptive is necessarily excluded permanently. Section 3 allows certain objections under section 3 (1) (b) , (c) and (d) to be overcome where the mark has acquired distinctive character through use before the application date.
The key question is whether a significant proportion of the relevant public has come to identify the goods or services as originating from a particular undertaking because of the use of the mark. Moreover, the evidence must show genuine trademark use rather than simply showing that the applicant is the only supplier of the relevant goods or services.
Conclusion
The UKIPO examination shows that trademark registration is fundamentally concerned with the ability of a mark to function as a badge of origin. The examination of absolute grounds ensures that descriptive, non-distinctive, customary or deceptive signs are not given inappropriate monopoly protection.
At the same time, the manual illustrates that registrability depends heavily on the context. The goods and the services covered, the perception of the relevant public, the way a mark is used, and the possibility of restricting a specification can all influence the outcome. Ultimately, the UKIPO’s approach seeks to balance the protection of legitimate trademarks with the need to ensure that words, signs and characteristics that other traders may reasonably use remain available for use.
By Shantal Remzi, a law student at Solent Southampton University
