Eligibility Checklist for UK Trade Mark Registration
Check whether your trade mark is registrable with the Intellectual Property Office under the Trade Marks Act 1994.
Overview
A registered trade mark gives the owner exclusive rights to use a sign for the goods or services for which it is registered (Trade Marks Act 1994, s.9). Registration is not mandatory — unregistered marks attract passing-off protection — but registration provides stronger, easier-to-enforce rights. The IPO examines applications for absolute and relative grounds for refusal. A mark which passes the initial examination may still be opposed by third parties within 2 months of publication.
Distinctiveness (Absolute Grounds)
Your mark is capable of distinguishing your goods or services from those of other undertakings (s.3(1)(a) TMA 1994)(Essential)
Highly distinctive marks (invented words, arbitrary words unrelated to the goods) are easiest to register; descriptive or generic marks are difficult
Your mark is NOT purely descriptive of the goods or services (s.3(1)(c)) — e.g. 'Cold Beer' for beer cannot be registered(Essential)
Your mark is NOT customary in the trade (s.3(1)(d))(Essential)
Your mark is NOT deceptive, contrary to public policy, or illegal (s.3(3)–(6))(Essential)
If your mark has become distinctive through use (acquired distinctiveness), you can rely on this to overcome objections (s.3(1) proviso)
Requires evidence of extensive use in the UK market
Relative Grounds — Conflicts with Earlier Marks
Search the IPO Trade Mark Register and EUIPO register for identical or similar earlier marks for the same or similar goods/services(Essential)
An identical mark for identical goods/services will be refused. Similar marks may be refused if there is a likelihood of confusion (s.5(2) TMA)
Consider whether any earlier mark has a reputation in the UK that your mark might take unfair advantage of or damage (s.5(3))
Consider whether your mark infringes any earlier unregistered rights (passing off) that could be grounds for opposition
Classification and Filing
Identify the correct Nice Classification class(es) for your goods and services (45 classes)(Essential)
You must be specific — 'all goods in Class 25' is no longer acceptable; use the IPO's Goods and Services tool
You have a genuine intention to use the mark in the UK for the specified goods/services(Essential)
A mark unused for 5 consecutive years can be revoked for non-use (s.46 TMA)