UK Trademark Examination and Objections: What to Expect from UKIPO

UK Trademark Examination and Objections: What to Expect from UKIPO

After filing your UK trademark application, the UKIPO assigns an examiner to review your mark. Understanding the examination process — and how to respond to objections — is critical to securing registration.

This guide explains the UKIPO examination procedure, common grounds for refusal, and strategies for overcoming objections.

Pro tip: Not sure if your mark will face examination objections? Request a free trademark check before filing to identify potential issues early.

How UKIPO Examination Works

The examination process has two stages:

1. Formalities Check (2–3 Weeks)

The UKIPO first checks that your application is complete:

• Filing fee received
• Applicant details provided
• Mark representation clear
• Goods/services specified with class numbers
• Address for service in the UK, Gibraltar, or Channel Islands

If anything is missing, you'll receive a formalities objection with a deadline to correct it.

2. Substantive Examination

An examiner reviews your mark against the absolute grounds for refusal under Section 3 of the Trade Marks Act 1994 (TMA 1994). This is where most objections arise.

Absolute Grounds for Refusal (Section 3 TMA 1994)

Section 3(1)(a) — Signs Not Satisfying Section 1(1)

The mark must be a "sign" capable of being represented graphically and distinguishing goods/services. This is a basic threshold that most applications meet.

Section 3(1)(b) — Devoid of Distinctive Character

Marks that are too generic, commonplace, or non-distinctive for the relevant goods/services. Examples:

• Single letters or numbers (without stylisation)
• Common laudatory words ("PREMIUM," "BEST")
• Simple geometric shapes

Section 3(1)(c) — Descriptive Marks

Marks that describe the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of the goods/services. Examples:

• "COLD BREW" for coffee
• "LONDON FASHION" for clothing
• "SPEEDY DELIVERY" for courier services

Section 3(1)(d) — Customary Terms

Marks that have become customary in the current language or established trade practices. Example: "ASPIRIN" (which has become generic in some jurisdictions).

Section 3(3) — Deceptive Marks

Marks that would deceive the public about the nature, quality, or geographical origin of the goods/services.

Section 3(5) — Bad Faith

Applications filed in bad faith can be refused, though this ground is rarely raised at examination.

Relative Grounds — Important Distinction

Unlike some other jurisdictions, the UKIPO does not refuse marks on relative grounds (Section 5 — similarity to earlier marks) during examination.

Relative grounds can only be raised by:

• Third parties filing opposition during the 2-month publication period
• Third parties filing invalidation proceedings after registration

This means it's entirely your responsibility to search for conflicting marks before filing.

The Objection Letter

If the examiner identifies issues, you'll receive an examination report (objection letter) explaining:

• Which grounds the objection is based on
• Why the examiner considers the mark unregistrable
• The deadline for your response

Response Deadline

You have 2 months from the date of the objection letter to respond. This deadline can be extended by filing a Form TM9E requesting additional time (typically another 2 months).

The GTC advantage: Our office action response service includes expert analysis of UKIPO objections and crafting persuasive responses that maximize your chances of overcoming the refusal.

Strategies for Overcoming Objections

1. Argue Distinctiveness

If the examiner considers your mark descriptive or non-distinctive, you can argue:

• The mark has a double meaning or creates a play on words that makes it distinctive
• The mark is suggestive rather than directly descriptive
• The mark's overall impression is distinctive even if individual elements are not

2. Claim Acquired Distinctiveness

Under Section 3(1) proviso, a mark that is inherently non-distinctive can still be registered if it has acquired distinctiveness through use. Evidence includes:

• Sales figures and market share
• Duration and extent of use
• Advertising expenditure
• Consumer surveys
• Media coverage

3. Amend the Specification

Sometimes the objection relates to the goods/services specification rather than the mark itself. You can:

• Narrow your specification to remove problematic terms
• Clarify the scope of your goods/services
• Add limitations that address the examiner's concerns

4. Amend the Mark

Limited amendments to the mark are possible if they do not substantially affect the identity of the mark. However, this option is rarely used and the scope is very narrow.

The Hearing Process

If your written response does not persuade the examiner, you can request a hearing before a Hearing Officer.

What to Expect:

• Hearings are conducted by the UKIPO's Tribunal Section
• They can be held in person, by telephone, or by video
• You can present oral arguments and additional evidence
• The Hearing Officer issues a written decision

Appeal Options:

If the Hearing Officer refuses your mark, you can appeal to:

• The Appointed Person (a senior IP lawyer appointed by the Lord Chancellor)
• The High Court (more expensive but establishes binding precedent)

Common Examination Outcomes

Tips for Avoiding Examination Objections

1. Choose a distinctive mark — invented words (like "GOOGLE," "KODAK") face far fewer objections than descriptive or suggestive terms
2. Avoid geographical terms — "LONDON," "MANCHESTER," etc. are likely to face objections unless you can show acquired distinctiveness
3. Don't be too descriptive — if consumers would understand your mark as describing what you sell, the examiner will object
4. Use the Right Start option — pay a reduced fee and get the examination result before committing to the full fee
5. Search first — while the UKIPO doesn't refuse on relative grounds, a search prevents costly opposition proceedings

Don't Let an Objection Derail Your Application

Most UKIPO objections can be overcome with the right arguments and evidence. The key is understanding what the examiner is looking for and responding strategically.

Start with a free trademark check →