Absolutely Not Registrable series: Spring 2025

As trade mark attorneys, we know how rigorously the UK Intellectual Property Office (“UK IPO”) examines UK trade mark applications to ensure they meet all legal requirements. Sometimes, this can lead to fascinating and unexpected refusals, other times these refusals can be helpful reminders of UK IPO practice and help us keep abreast of developments. In the latest instalment of our seasonal round-up, we take a look at a range of trade mark application which were refused by the UK IPO in the second half of 2024 and consider what applicants can learn from them.

On the chopping block

Obtaining a trade mark registration for  your company name seems like it would be a logical and relatively straightforward task. However, as Chef Supply Co Pty Ltd discovered, registering a company name as a trade mark in the UK can cause unanticipated problems if the company name isn’t sufficiently distinctive.

In January 2024, Chef Supply Co Pty Ltd filed an application to register the trade mark “Chef Supply Co” for various knife-related goods in class 8. The UK IPO raised objections under Section 3(1)(b) and (c) of the Trade Marks Act on the basis the mark would be perceived as merely descriptive of the goods – specifically knives intended to be supplied to chefs, rendering the name non-distinctive and unable to distinguish the company’s products from those of its competitors.

The UK IPO Trade Marks Manual offers clear guidance on this registration of company names, stating that marks combining terms such as ‘company’ or ‘limited’ with words that are descriptive of the goods or services are unlikely to meet the minimum degree of distinctiveness required for a UK trade mark registration.

Failed attempts to register descriptive company names are relatively common. For new business owners, it is important to think about the marks being used to sell goods or services to the public, as this is not always the same as the company name. If a company has a descriptive business name but offers goods or services under a more distinctive brand name, it might not be necessary to register the company name as a trade mark. On the other hand, you should also remember that registration of a company name doesn’t give you any rights to use that company name, or to prevent others from using the name, so companies with very distinctive company names should consider registration of the distinctive elements of their name as a trade mark if they want to be able to stop third parties using the name. The interaction of company names and trade marks can be complex and needs to be assessed on a case-by-case basis, so ask your legal advisor for advice if you are unsure about the pros and cons of protecting your company name as a trade mark.

Another slogan risks a trade mark application

Slogans can be a powerful marketing tool for businesses as they provide a concise and memorable way to communicate a brand’s message. Companies often seek to protect particularly memorable or commercially successful slogans as trade mark registrations. However, as we have seen time and time again in this series, slogans typically have a much harder time being accepted by the UK IPO as sufficiently distinctive. G2 Web Services, Inc recently found this out when its application to register the slogan “KNOW YOUR RISK, INCREASE YOUR REVENUE” as a trade mark was rejected.

In theory, slogans are eligible for trade mark protection if they are capable of functioning as a badge of origin, i.e. consumers recognise the slogan as identifying the source of goods and services. However, the long-held view of the UK IPO (along with other offices, such as the EU IPO) is that slogans are typically perceived as more of a promotional or advertising statement than an indication of the origin of goods or services. In the case of G2 Web Services, the UK IPO issued a Section 3(1)(b) refusal on the basis the slogan would be perceived as a as a call to action highlighting the benefits of using the services (being risk-related software services), rather than being relied on to indicate a specific trade source.

This is a common example of the tension between trade mark lawyers and marketing departments. It is (understandably) common for marketing departments to devise slogans which inform the consumer about the quality or benefit of the product or service being offered. Whilst these informative phrases can make great marketing slogans, they don’t always make good trade marks. Slogans can be an essential part of a marketing and branding strategy and understandably companies wish to seek trade mark protection for them, but it is important to remember that the primary function of a trade mark is to serve as a badge of origin and slogans often do not fulfil that function. Where a descriptive or a promotional phrase is the right commercial tool to spread your message, perhaps stick to using it without seeking a trade mark registration unless it becomes particularly renowned. Where a slogan is particularly distinctive, or becomes particularly famous over time by longstanding use, then registration might be an option. For example, the following slogans have been granted trade mark protection in the UK (no prizes for guessing who the belong to!):

• HAVE A BREAK
• EVERY LITTLE HELPS
• SHOULD’VE GONE TO SPECSAVERS

These examples are not obviously descriptive of any goods or services, but rather have become recognisable and synonymous with certain goods or services through use.

A no-go logo

What do you think of when you hear ophthalmic preparations? Is it two tear drops? Apparently, this is what the UK IPO thinks of when it hears the phrase.

Sacsh, Inc filed an application for this mark in relation to “eye drops“ and “ophthalmic preparations”:

The UK IPO refused the registration of this logo on the basis it was devoid of distinctive character. The refusal was based on the reasoning that the logo, whilst visually appealing, was nothing more than ‘aesthetically pleasing imagery’ that would be seen as purely decorative. Whilst there is no baseline level of creativity or novelty required for a logo to be considered a trade mark, if it has a direct and obvious link to the goods (as it did in this case), it is unlikely to be seen as distinctive enough to be afforded protection.

Simplistic marks- particularly those that reply on basic shapes or common imagery directly associated with certain products- are far more likely to be seen as non-distinctive and it is common practice for these kinds of marks to be rejected on the grounds of public interest. It would be wrong of the UK IPO to accept this logo for registration and allow one entity to monopolise a drop that merely represents what the product (i.e. eye drops) is.  If the design evokes an obvious connection to the product- such as teardrops representing eyedrops – the mark is unlikely to meet the necessary distinctiveness requirements for registration. Applicants are advised to discuss their options with a legal advisor who might be able to help identify registrable marks within the portfolio.

Although the marks applied for are all very different, none of them were considered by the UK IPO to be distinctive enough to be registered. These three UK trade mark refusals highlight the importance of the essential function of a trade mark, namely acting as a badge of origin, is when it comes to obtaining registered protection.

To discuss your own trade mark questions or concerns, get in touch with our Trade Marks team here.