When starting a business or creating a product it is always a good idea to register your trademark. Once the mark is officially registered, you will have the exclusive right to use and market the product and can prevent others from using it.

To register a trademark in the UK, certain criteria need to be filled. These criteria are set in law within the Trade Marks Act 94 (TMA) and the Trade Mark Rules 2008 (TMR).

Criteria for registration:

Section 1 (1) of the TMA

1) Sign

First of all, to register a trademark there must be a sign. There is no exhaustive list of what constitutes a sign within the legislation but some examples of what would qualify would be words (brand names) and the design (logo for example). Additionally, a colour or a gesture may satisfy the criteria of being a sign.

2) Clear and precise representation

In addition to there being a sign, there must also be a precise and clear representation of the mark. The mark that is being registered must be clear in what it is representing. So essentially, the sign must be clear and precise.

3) Distinctiveness

The third criteria that must be met are that the sign must be distinctive from any other one and that the consumer can distinguish it from another brand. The sign can not be registered if it is something so common that it is seen in everyday use. That would not qualify it as being distinctive.

Absolute grounds for refusal, Section 3 (1) TMA

There are some grounds for absolute refusal of trademark registration. These are set out in s 3 (1) of the TMA. These grounds must be met for the mark to be registered.

Section 3 (1) (a) – Does not satisfy section 1 criteria.

So, the mark must satisfy the criteria that are set out in section 1 of the TMA – which are discussed above.

Section 3 (1) (b) - No distinctive character

The mark cannot be something so common that it is not distinctive. So it is good to make up names when trying to make a new trademark or use an odd combination of words.

Section 3 (1) (c) - Purely descriptive

The mark cannot be something too descriptive. You cannot start an apple juice company and simply register ‘apple juice’ as your trademark.

Section 3 (1) (d) - Customary in trade

You cannot register a mark or a word that has become customary in a trade, or is a generic name for a product.

Relative grounds for refusal – Section 5 TMA

Already registered trademark. An already registered trademark is not an absolute ground of refusal for a new registration but the existing owner can oppose the new application.

In conclusion, to register a trademark in the UK you must satisfy the criteria under S 1 of the TMA. You must also avoid the absolute grounds for refusal or the application will be denied. There are also relative grounds for refusal if the trademarks are similar. In these cases, it depends if it is registered in the same trade and depends on how similar the mark is.