UK Trademark Examination and Objections: What to Expect from UKIPO

After filing your United Kingdom trademark application, the UKIPO assigns an examiner to review your trademark. Understanding the examination process, and how to respond to objections, is what gets you to registration.

This guide explains the UKIPO examination procedure, the common grounds for refusal, what a response costs, and the strategies that overcome objections. For the wider picture of filing in the United Kingdom, start with our United Kingdom country guide.

Pro tip: Not sure if your trademark 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 to 3 Weeks)

The UKIPO first checks that your application is complete:

• Filing fee received (£205 for one class, plus £60 for each further class)
• Owner details provided
• Trademark representation clear
• Goods and services specified with class numbers
• Address for service in the United Kingdom, Gibraltar, or the Channel Islands

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

2. Substantive Examination

An examiner reviews your trademark 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 trademark must be a "sign" that can distinguish your goods or services from those of other traders, and that can be represented on the register in a clear and precise way. (The old requirement that a trademark be "represented graphically" was removed in 2019, which is why sound and motion marks can now be filed as audio and video files.) This is a basic threshold that most applications meet.

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

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

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

Section 3(1)(c): Descriptive Trademarks

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

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

Section 3(1)(d): Customary Terms

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

Section 3(3): Deceptive Trademarks

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

Section 3(5): Bad Faith

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

Relative Grounds: An Important Distinction

Unlike the offices in some other countries, the UKIPO does not refuse trademarks on relative grounds (Section 5, similarity to earlier trademarks) during examination. The examiner will send you a search report listing earlier trademarks that may conflict, and will notify their owners when your application is published, but the office does not refuse on that basis.

Relative grounds can only be raised by:

• Third parties filing an opposition during the 2-month publication period (the government fee for a full opposition on Form TM7 is £250)
• Third parties filing invalidation proceedings after registration

This means it is entirely your responsibility to search for conflicting trademarks before filing.

The Objection Letter

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

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

Response Deadline

You have 2 months from the date of the objection letter to respond. If you need more time, you can request an extension before the deadline expires; the examination report tells you how.

What a Response Costs

There is no UKIPO fee for filing a written response to an examination report. The cost is our professional fee for analyzing the objection, gathering evidence, and drafting the argument. Our office action response service covers UKIPO objections at a fixed price; see the pricing page for the current figure. If the case goes to a hearing, expect a further professional fee for the submissions and the hearing itself.

The GTC advantage: Our office action response service includes expert analysis of UKIPO objections and written responses that address each ground the examiner raised.

Strategies for Overcoming Objections

1. Argue Distinctiveness

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

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

2. Claim Acquired Distinctiveness

Under the Section 3(1) proviso, a trademark 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 and services specification rather than the trademark itself. You can:

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

4. Amend the Trademark

Limited amendments to the trademark are possible if they do not substantially affect its identity. 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

How Long It Takes

A hearing is usually listed within a few months of the request, and the written decision follows after the hearing. In practice, the hearing route adds several months to the timeline compared with an application that is accepted on the written response, so it is worth putting your strongest evidence into the first response.

Appeal Options:

If the Hearing Officer refuses your trademark, 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 trademark. Invented words (like "GOOGLE," "KODAK") face far fewer objections than descriptive or suggestive terms
2. Avoid geographical terms. "LONDON," "MANCHESTER," and the like are likely to face objections unless you can show acquired distinctiveness
3. Do not be too descriptive. If consumers would understand your trademark as describing what you sell, the examiner will object
4. Consider the Right Start option. You pay part of the fee up front, get the examination result, and then pay the balance only if you want to continue
5. Search first. While the UKIPO does not refuse on relative grounds, a search prevents costly opposition proceedings

Most Objections Can Be Overcome

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.

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Sources

• UK IPO: trade mark forms and fees
• UK IPO: Trade Marks Manual