UK Trade Marks: What Are The Key Requirements?

Written by Alexander Welham | July 26, 2017

Trade Marks

Registering your trade mark is an important step to take in protecting the brand and reputation of your business. To avoid setbacks in the application process, it is important to understand the requirements for a successful trade mark application before going ahead.

This article sets out the key requirements for a successful UK trade mark application including requirements relating to:

  • Distinctiveness
  • Graphical representation
  • Not being deceptive or misleading
  • Not being contrary to public policy or morality
  • Not being identical or confusingly similar to other marks
  • Not being descriptive or generic
  • Not a being prohibited sign (including national flags and emblems, protected emblems, geographical indications and traditional terms)

Finally, we will outline the steps to registering your mark if it meets all these requirements.

Trade Mark Requirements


Distinctiveness is a fundamental requirement for a trade mark in the UK. A trade mark should be capable of distinguishing the goods or services of one company from those of others. In other words, it should possess unique characteristics that set it apart from common or generic terms related to the goods or services it represents.

Distinctiveness can be classified into two types: inherent distinctiveness and acquired distinctiveness. Inherent distinctiveness refers to trade marks that are inherently unique and distinctive on their own. These include invented words (e.g. Kodak), arbitrary or fanciful terms (e.g. Apple for computers), and coined phrases (e.g. Xerox). Such marks have no direct connection to the goods or services they represent, making them strong and protectable.

On the other hand, acquired distinctiveness, also known as secondary meaning or acquired distinctiveness through use, applies to marks that were not initially distinctive but have gained recognition and association with specific goods or services through extensive use and promotion. For example, “Google” was once a coined term with no inherent meaning, but it acquired distinctiveness through extensive use as a search engine.

If your mark is to be considered to have the capacity to distinguish, you should avoid the following:

  • Simple signs such as single letters, numbers or grammatical, signs;
  • Simple colour marks;
  • Shapes which do not significantly depart from the norms of the sector;
  • Get-up and trade dress;
  • Names and signatures;
  • Slogans which are solely descriptive or promotional;
  • Marks which are used widely in the trade or profession; and
  • Marks which designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods or services.

Graphical Representation

A trade mark must be capable of being represented graphically in the trade mark application. This requirement ensures that the mark can be accurately and clearly depicted in the trade mark register and be used as a visual representation of the mark.

Graphical representation allows the trade mark to be represented in various formats, including word marks (such as stylized letters or a specific font), logos (such as distinctive designs or symbols), colours (such as specific colour combinations or patterns), shapes (such as unique product shapes or packaging), or a combination of these elements.

The purpose of graphical representation is to provide a clear and consistent representation of the mark for examination and registration purposes. It helps in identifying and distinguishing the mark from other trade marks.

Not Deceptive Or Misleading

A trade mark must not be deceptive or misleading to consumers regarding the nature, quality, or geographical origin of the goods or services it represents. This requirement ensures that consumers are not misled or confused about the characteristics or source of the products or services associated with the mark.

For example, if a company produces non-dairy milk alternatives, it cannot use a trade mark that includes the term “milk” in a way that misleads consumers into thinking the product contains dairy. Similarly, a mark that falsely suggests a particular quality, such as “Premium Gold” for low-quality products, would be considered deceptive.

Not Contrary To Public Policy Or Morality

A trade mark should not be against public policy or morality. This requirement prevents the registration of marks that promote illegal activities, are offensive, or go against established principles or values.

Trade marks that may be refused registration on these grounds include those that incite hatred, discrimination, violence, or illegal behaviour. Additionally, marks that contain obscene or offensive language, religious symbols used inappropriately, or controversial political statements are generally not registrable.

The determination of what is contrary to public policy or morality may vary based on societal norms and can be subject to interpretation. The UK Intellectual Property Office (UKIPO) considers various factors, such as the potential impact on public interest and values, when assessing the acceptability of a trade mark.

Not Identical Or Confusingly Similar

A trade mark must not be identical or confusingly similar to existing registered trade marks or prior pending applications. This requirement prevents confusion among consumers and protects the rights of existing trade mark owners.

When assessing similarity, the UKIPO considers the overall impression created by the mark, including its visual, phonetic, and conceptual elements. If the proposed mark is identical or highly similar to an existing mark and covers similar or related goods or services, it is likely to be rejected.

For example, if a company tries to register a mark “Coca-Cola” for a beverage, it would be rejected due to the high similarity to the existing registered mark. Similarly, if a mark is visually or phonetically similar to an existing mark, but covers unrelated goods or services, it may still be refused registration to avoid potential confusion.

Not Descriptive Or Generic

A trade mark should not merely describe the goods or services it represents, as descriptive or generic terms are not considered inherently distinctive. The purpose of trade marks is to identify the origin of goods or services, and generic or descriptive terms cannot fulfil this function effectively.

Descriptive terms directly describe the characteristics, quality, or ingredients of the goods or services. For example, “Delicious Breads” would be considered descriptive for a bakery. Generic terms, on the other hand, are common names or terms that refer to a class of goods or services. For instance, “Bakery” would be considered generic for a bakery.

However, if a descriptive or generic term acquires distinctiveness through extensive use and becomes associated with specific goods or services, it may still be registrable. This is known as acquired distinctiveness or secondary meaning. For example, “Apple” as a trade mark for computers and electronic devices acquired distinctiveness through extensive use and is now a strong and protectable mark.

Not A Prohibited Sign

Certain signs are prohibited from being registered as trade marks in the UK. These include signs that are contrary to law, public policy, or accepted principles of morality. Prohibited signs include:

  • National Flags and Emblems: Trade marks cannot consist of national flags or emblems that are protected under national legislation. For instance, the Union Jack flag of the United Kingdom cannot be registered as a trade mark.
  • Protected Emblems: Trade marks cannot include protected emblems, such as the Royal Arms or other official emblems protected under specific regulations.
  • Geographical Indications: Marks that consist of geographical indications or names associated with specific regions or locations, such as “Champagne” for sparkling wine produced in the Champagne region of France, cannot be registered as trade marks.
  • Traditional Terms: Certain traditional terms or indications used in specific industries or products, such as “Parmigiano Reggiano” for a specific type of cheese, may be protected and cannot be registered as trade marks.

Can I Protect Names/Surnames?

Be aware that there is no automatic right to use your name/surname or register it as a trade mark. If another company or individual has already registered this mark, they will be entitled to hold that right.

This issue played out in the recent Lewis Hamilton case where an attempt to register LEWIS HAMILTON as a trade mark in a variety of products, including wristwatches was disputed by Swedish manufacturer, Hamilton International AG. Despite attempts to invalidate their existing HAMILTON mark, the LEWIS HAMILTON mark registration was refused.

So, what are the next steps if your mark meets these requirements?

Before beginning your application, it is important to carry out a clearance check to make sure there are no existing registered marks which are identical or confusingly similar and could lead to your application being challenged. An easy way to do this is by searching the UK IPO trade mark registry. A search should be carried out for the mark you intend to register, in relation to the same classes of goods and/or services.

The UK IPO will not reject an application on the basis of similar marks being on the register, but they will provide you with a list of such similar marks following examination. They may notify the owners of such similar marks of the publication of your application. Once published, your mark will be subject to a two-month opposition period whereby such owners can choose to oppose your mark.

If you decide to go ahead with the brand name and logo after the clearance check, the next step is to begin your registration. To register a trade mark in the UK, an application must be filed with the UK Intellectual Property Office (UKIPO). The application itself contains a number of requirements, including:

  • Clear Representation: The trade mark application should include a clear representation of the mark. This can be in the form of a visual representation, such as a high-quality image or a stylized design, for logo marks. For word marks, the application should specify the words and any specific font or style.
  • Goods and Services Classification: The goods and services to which the trade mark will apply should be categorized according to the appropriate class(es) of the Nice Classification system. The Nice Classification is an international classification system used to categorize goods and services for the purpose of trade mark registration. It helps in determining the scope of protection and ensures consistent classification of trade marks worldwide.

Properly filing the application with accurate and detailed information, including a clear representation of the mark and appropriate classification of goods and services, is crucial for successful registration. For more information on the registration process, see our post: Trade Mark Registrations: Everything You Need To Know


It’s important to note that while meeting the requirements outlined in this post increases the likelihood of a successful trade mark registration, the UKIPO conducts a thorough examination process to determine if the mark fulfils all necessary criteria. Consulting with a trade mark specialist can provide valuable guidance and assistance throughout the process to ensure a strong and protectable registration.

In conclusion, the key requirements for a trade mark in the UK include distinctiveness, graphical representation, non-deceptiveness, conformity with public policy and morality, non-identical or confusing similarity to existing marks, non-descriptiveness or genericness, absence of prohibited signs, and proper filing and classification. Understanding these requirements and seeking professional advice can help individuals and businesses secure their trade mark rights effectively.

For help with the application process, you can contact our trade mark specialists to organise a free consultation – fill out the contact form below to get started.

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