A Practical Guide to Registrable &

Unregistrable Trade Marks

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Please note that all section numbers referred to in this guide are from the
Trade Marks Act 1994 unless otherwise stated.

We have already seen in lectures that to be capable of registration, a mark must

satisfy the s 1(1) requirements. Thus, it must be a sign, that is capable of being
represented on the Register, and which is also capable of distinguishing the goods
or services of one undertaking from those of other undertakings. Furthermore, it
must fall outside the Absolute Grounds for refusal of registration in s 3.

But what does this mean in practice? What kind of marks will be registrable and
which ones will prove rather more difficult to register?

This guide is intended to give you plenty of practical examples to illustrate the issues
that we have already studied in lectures. Please remember that some examples will
no longer prove relevant if there is a future change of law or practice. Consequently,
you should always consult the UKIPO Manual of Trade Marks Practice for up-to-date
information. However, even the Manual comes with a warning that practice stated in
it should not be applied rigidly and without regard to the particular circumstances of
an application. It also makes it clear that each case must be considered on its own
merits. Here is the link to the Manual: https://www.gov.uk/guidance/trade-marks-
manual

You will recall that s 1(1) of the Act includes a non-exhaustive list of examples of
signs that are potentially registrable as trade marks. This guide will begin by looking
at each of these examples in turn.

1. Words

This category includes:

 Brand names, e.g. COKE, PEPSI, MARS, TWIX, NIKE, KODAK

 Personal names (surnames, first names and nicknames), e.g. BECKHAM,
JAMIE OLIVER, CATHERINE ZETA-JONES
 Signatures, e.g. the ‘Kellogg’s’ signature
 Company names, e.g. WALKERS, JAGUAR
 Domain names, e.g. lastminute.com, amazon.com
 Place names, e.g. TOTTENHAM
 Slogans, e.g. I CAN’T BELIEVE IT’S NOT BUTTER, NEVER KNOWINGLY
UNDERSOLD, JUST DO IT

Representation on the Register should not be a problem – printing the word/s in

the box on the TM3 form will suffice.

According to the traditional UK approach, capacity to distinguish will only be a

problem if the word “overwhelmingly performs a descriptive or technical function” or
is “overwhelmingly generic” - Jeryl Lynn Trade Mark [1999] FSR 491. According to

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the CJEU, words have the potential (capacity) to act as a trade mark and so there
shouldn’t be a problem.
The Absolute Grounds for refusal may prove trickier to overcome.

Brand names will fall foul of s 3(1)(b) if they lack distinctive character – TREAT for
an ice-cream sauce for example (British Sugar Plc v James Robertson & Sons
Ltd [1996] RPC 28).

 However, invented words are registrable and the classic example of KODAK
was given in lectures. The UKIPO provides two further examples of invented
words – FARNOOZ and DANRYVOL.

 Similarly, a word may be registrable where its ordinary meaning bears no

relationship to the applicant’s goods or services – the examples of BALL for a
vacuum cleaner and NORTH POLE for bananas were given in lectures. The
UKUKIPO website gives the example of IMPERIAL LEATHER for soap.

Brand names will also fall foul of s 3(1)(c) if they designate the kind, quality or
quantity of the goods or services. Practical examples include JUMBO, MINI,
PERSONAL (for computers), VERTICAL (for blinds), BEST and GOOD. Several
case examples were considered in lectures, including OHIM v Wrigley (Case C-
191/09) [2003] ECR I-1244 and Froot Loops Trade Mark [1998] RPC 240.

 However, where the word is a lexical invention with a syntactically unusual

juxtaposition, such as BABY-DRY, it may be accepted.

Misleading brand names will not be accepted as a result of s 3(3)(b). The UKIPO
Manual of Trade Marks Practice provides some cracking examples, including
ORLWOOLA for suits that aren’t made of wool.

Brand names that designate the geographical origin of the goods or services will not
be accepted for registration where the name designates a place which is currently
associated in the mind of the relevant class of persons with the category of goods
concerned, or where it is reasonable to assume that such an association may be
established in the future (s 3(1)(c)), e.g. BLACKPOOL for sticks of rock.

 That said, an application by Tottenham Hotspur FC to register the word

TOTTENHAM (Application No 2130740) was accepted, despite opposition
from local traders who claimed it consisted entirely of a sign or indication that
designated the geographic origin of the goods or services. The Hearing
Officer decided that although Tottenham is indeed an area of London,
evidence suggested that the public are far more likely to associate the word
with the football club than as an indicator of geographical origin.

Indications of geographical origin will also be refused under s 3(3)(b) where they are
misleading. This will be the case where the place has a reputation for the goods or
services, but the goods or services for which the applicant is trying to register the
mark are not produced there! The UKIPO Manual of Trade Marks Practice provides
a number of examples here, including PIAZZA D' ITALIA for clothing not made in
Italy, because Italy has a strong reputation for quality cloth and clothing.

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Names that have become generic will not be accepted for registration (they may also
lose their registration if already registered). We discussed in lectures whether
HOOVER has become rather too generic (although it remains registered as a UK
trade mark), but other examples include ASPIRIN, CELLOPHANE and SHREDDED
WHEAT.

Laudatory epithets will not be accepted. An application by the supermarket Tesco to

register FINEST was refused on this basis (application BL 0/420/00).

Personal names may be registered, with UK Registry practice having changed

drastically since the CJEU decision in Nichols plc v Registrar of Trade Marks
(Case C-404/02)[2004] ECR I-8499. Thus, registrability is no longer determined
according to how common the name is.

In practice, names will be easier to register if they are presented in a fancy way (as a
signature perhaps, or using fancy lettering), and the UKIPO has stated that full
names and surnames with initials may have a greater capacity to distinguish.

We saw in lectures that famous names may be difficult to register because they lack
capacity to distinguish. ELVIS, DIANA and JANE AUSTEN are examples of famous
names that have been refused registration because it would be difficult for them to
indicate a particular trade.

The names of current celebrities may be registrable and many personalities have
registered not only their names but their signatures too. However, it is important to
remember that use of the mark must be trade mark use – for specified goods and/or
services that the celebrity produces or endorses.

 Andy Murray has registered his name as a Community trade mark in various
different classes of the Register, including Class 25 (for articles of clothing,
etc.) and Class 28 (for sporting goods, etc.). His application for a UK trade
mark was, however, refused.

 LEWIS HAMILTON is registered in nine different classes of the UK Register.

 The Beckham family, including Brooklyn, Romeo, Cruz and Harper, have
numerous UK and Community trade marks.

However, registration will be refused where it is for goods that are mere ‘image
carriers’, because the public will not expect such goods to originate from the
celebrity. Thus, an application to register a celebrity name for posters, photographs
and other image carriers will be refused – see Linkin Park LLC’s trade mark
application [2006] ETMR 74. This is a particular problem for pop stars and sports
personalities.

 That said, according to the UKIPO Manual of Trade Marks Practice, a mark
consisting of the name of a pop band should be accepted for sound
recordings and T-shirts as these are not mere image carriers.

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The names of fictional characters may also lack distinctiveness. According to the
UKIPO Manual of Trade Marks Practice:

“The names of fictional characters/stories will be accepted prima facie unless

they are well known to the extent that they have passed into common
language and culture. The level of recognition, fame and historical use
associated with some fictional names means that they are unlikely to be
perceived as indicators of trade origin. For example, ‘SHERLOCK HOLMES’
is a name that has been used by many traders over the years in order to
describe both a series of stories and a character that appears therein.
Because of the extent of its use, today’s relevant public would not expect
products bearing the name ‘SHERLOCK HOLMES’ to originate from the
estate of Arthur Conan Doyle. In this type of scenario, the name of the
character is devoid of any distinctive character, and is descriptive of any
books, films etc. which feature that character. Objections would therefore be
taken under sections 3(1)(b) and (c). However ‘SHERLOCK HOLMES’
applied for bananas or wedding dresses for example, which have no
association with the character, would not face an objection.”

SHERLOCK HOLMES and CINDERELLA are examples of marks that would be

refused on this basis. However, where the name is from a current TV programme,
book or film, things may be different because the name is not long established and
well known, and the public may expect its use on merchandising. Similarly, where a
fictional character name has been used by a single undertaking, it is more likely to
be distinctive. According to the UKIPO Manual of Trade Marks Practice,
SPIDERMAN would be accepted on this basis:

“‘SPIDER MAN’ is the name given to a fictional superhero who frequently

appears in both comic books and films published by, produced by, or
associated with Marvel Comics. The relevant public will be aware of the
character’s long-standing association with the Marvel brand, and will assume
that use of the name is either under the control of, or sanctioned by, Marvel
comics, and so would recognise its capacity to function as a trade mark.”

Slogans are popular trade mark registrations but are often too descriptive to be
accepted. Of course, highly imaginative slogans (the sort that win national
competitions) may be registered. Here are a few examples:

 CATCH A WRINKLE IN TIME for cosmetics (registered by Soap & Glory

Limited)
 THE SHOES YOUR FEET HAVE BEEN ACHING FOR (registered by Marks
and Spencer Plc.)
 JUST DO IT for Nike sportswear

The CJEU has confirmed that slogans are unlikely to be inherently distinctive. Thus,
LOOKS LIKE GRASS FEELS LIKE GRASS PLAYS LIKE GRASS was refused
registration for synthetic surfacing because it was descriptive of the goods
concerned.1 In most cases, the applicant will therefore have to prove factual

1 T-216/02 Fieldturf Inc v OHIM [2004] ECR II-1023

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distinctiveness under the proviso. We saw in lectures that the CJEU in Société des
Produits Nestlé SA v Mars UK (Case C-353/03) [2005] ECR I-6135 decided that
even a secondary mark could acquire factual distinctiveness.

2. Designs

Designs (or devices) include:

 Character designs – logos (the NatWest logo), symbols (the Nike ‘swoosh’),
stylised designs (the Guinness harp), or cartoon style characters.

 Stylised word designs – the style of lettering is often a distinctive part of a

mark and will be a separate mark from the word itself. By way of example,
VIRGIN is registered as a word mark and as a stylised design.

Representation on the Register should not be a problem – printing the design in

the box on the TM3 form will suffice.

According to the traditional UK approach, capacity to distinguish will only be a

problem if the design “overwhelmingly performs a descriptive or technical function” or
is “overwhelmingly generic” - Jeryl Lynn Trade Mark [1999] FSR 491. According to
the CJEU, designs have the potential (capacity) to act as a trade mark and so there
shouldn’t be a problem.

The Absolute Grounds for refusal will prove trickier to overcome if the design lacks
distinctiveness. Simple designs and devices common to the trade are not likely to be
accepted.

 However, it should be noted that the addition of a distinctive word mark to a

less distinctive design (and vice versa) may allow the whole thing to be
registered. This is because distinctiveness is judged by looking at the mark
as a whole.

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 3. Letters

These will include abbreviations such as BHS or RBS. Even single letters are
registrable in theory but in Joop! V OHIM (Case T-191/08), an application to register
an exclamation mark was refused.

Representation on the Register should not be a problem – printing the letters in

the box on the TM3 form will suffice.

According to the traditional UK approach, capacity to distinguish will only be a

problem if the letters “overwhelmingly perform a descriptive or technical function” or
are “overwhelmingly generic” - Jeryl Lynn Trade Mark [1999] FSR 491. According
to the CJEU, letters have the potential (capacity) to act as a trade mark and so there
shouldn’t be a problem.

The Absolute Grounds for refusal may prove a problem where the letters designate
the characteristics of the goods or services, and/or are customary in the trade –
s 3(1)(c) and/or (d). The UKUKIPO Manual of Trade Marks Practice gives the
example of XL for clothes.

In West (t/a Eastenders) v Fuller Smith & Turner plc [2003] FSR 816, revocation
of the letters ESB (being an acronym of Extra Strong Bitter) was sought on the
ground that it lacked distinctive character. The Court of Appeal refused to revoke
registration of the mark. It held that a mark would offend s 3(1)(b) only if the average
consumer knew that the sign was used exclusively as an indication of the kind or
quality of the goods or was in common use.

4. Numerals

There are several examples of numeral registrations, including 1010 (registered by

Acheson and Acheson Limited) and 501 for jeans.

Representation on the Register should not be a problem – printing the numerals in

the box on the TM3 form will suffice.

According to the traditional UK approach, capacity to distinguish will only be a

problem if the numerals “overwhelmingly perform a descriptive or technical function”
or are “overwhelmingly generic” - Jeryl Lynn Trade Mark [1999] FSR 491.
According to the CJEU, numerals have the potential (capacity) to act as a trade mark
and so there shouldn’t be a problem.

The Absolute Grounds for refusal may prove a problem where the numerals
designate the characteristics of the goods or services, and/or are customary in the
trade - s 3(1)(c) and/or (d). The UKIPO Manual of Trade Marks Practice gives
several examples, including:

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  1600 for cars, 34R for clothing and 185/65 for tyres (these merely designate
size)
 200 for cigarettes (this merely designates quantity)

5. Shapes

We saw in lectures that one of the first shapes to be registered under the 1994 Act
was the Coca Cola bottle. Other examples include the shape of:

 Toblerone chocolate
 A BT telephone box
 The BMW mini

Representation on the Register should not be a problem, although the UKIPO

suggests that a line drawing is better than a photograph because it can better show
fine details. Up to six representations of each mark will be accepted.

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The Absolute Grounds for refusal may prove a problem however, especially
s 3(1)(b). Although the CJEU in Philips v Remington decided that any mark which
is understood by the public as a badge of origin is registrable, in Linde AG v
Deutsches Patent-und-Markenamt [2003] RPC 45, the CJEU concluded that “it
might in practice be more difficult to establish distinctiveness in relation to shape of
goods’ marks than word or figurative marks”. This is because “average consumers
are not in the habit of making assumptions about the origin of the products on the
basis of their shape or the shape of their packaging in the absence of any graphic or
word element”. This was confirmed in Henkel KGaA v OHIM [2004] ECR I-5089.

In Procter & Gamble v OHIM [2004] ETMR 88, the CJEU held that “the more
closely the shape for which registration is sought resembles the shape most likely to
be taken by the product in question, the greater the likelihood of the shape being
devoid of any distinctive character”.

As a result, only those marks that are really different or unusual in that sector are
likely to be registrable. According to Bently and Sherman, it is necessary to ask if
there is anything “unusual or idiosyncratic about the shape such that the relevant
consumer would notice it and remember it”. In addition, they say that an assessment
is then needed as to whether the consumer would think of the shape as “indicative of
source”.2

For the reasons outlined above, the shape of WERTHER’S ORIGINALS sweets was
refused registration because the CJEU said it did not depart significantly from the
shape commonly used in the confectionary sector.3 Likewise, the shape of the
LINDT chocolate rabbit was refused registration because it was not a significant
departure from what was common in the trade.4 However, OHIM recently decided
that the shape of a CROCS shoe did depart significantly from a standard shoe shape
and so an application by the supermarket Lidl to get the trade mark cancelled was
refused.

 It may be possible to register a shape where there is evidence that consumers

in the relevant sector rely upon the appearance of the shape of the product or
its packaging as a means of identifying the origin of the product. The use of
vehicle radiator grilles is an example provided in the UKIPO Manual of Trade
Marks Practice. According to the Manual, Grilles are used by manufacturers
as means to differentiate their products, in a trade mark sense.

We saw in lectures that s 3(2) provides additional hurdles for shape marks. The
rationale for this is that certain shapes must be available for use by all. Lego applied
to register as a trade mark the shape of its Lego brick. The application was refused
(and the decision of OHIM was upheld by the CFI) because the shape of the brick
was necessary to obtain a technical result. 5

2 Lionel Bently & Brad Sherman, Intellectual Property Law 4th edition OUP 2014 936
3 August Stork Case C-24/05 P [2006] ECR I-5677
4 Lindt v OHIM Case C-98/11P
5 Lego Juris A/S v OHIM [2013] All ER (EC) 874

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We also saw in lectures that a number of marks not mentioned in s 1(1) of the
Act are now potentially registrable. These include:

6. Colours and colour combinations

Examples include:
 Green – registered by BP
 Orange – registered by Orange Brand Services Limited

 Turquoise – registered by Heinz

A recent case involving Cadbury’s application to register as a trade mark its

particular shade of purple may cause real problems for future colour applications.
Nestlé opposed Cadbury’s application, arguing that the mark was insufficiently
precise. Overturning the decision of the High Court, the Court of Appeal held that
the mark did not satisfy the requirement of a sign. Furthermore, it was not capable
of graphical representation.6

The CJEU had previously ruled on the graphical representation of colours in

Libertel Groep BV v Benelux Merkenbureau [2004] FSR 4. It decided that a
colour may be represented graphically only if it meets the Sieckmann criteria

6 Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174

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(below). Reproducing the colour on paper will not suffice but identifying the colour
using an internationally recognised identification code will suffice. ‘Orange pantone
151’ is fine. The Heinz registration (shown above) pre-dates Sieckmann.

Acceptable colour representations are shown below:

Another case looked at the registrability of two colours – Heidelberger Bauchemie

GmbH [2004] ETMR 99 and confirmed that the Siekmann criteria must be met. As
a result, the two colours must be “systematically arranged by associating the colours
in a pre-determined and uniform way”. This is likely to create practical difficulties for
many businesses because they will need to be sure how they will use the colour
combination.

A major hurdle for colours is the absolute ground for refusal contained in
s 3(1)(b) – they must have distinctive character. In Libertel Groep BV v Benelux
Merkenbureau, the CJEU held that “distinctiveness without any prior use is
inconceivable save in exceptional circumstances and particularly where the number
of goods or services for which the mark is claimed is very restricted and the relevant
market very specific”. The CJEU said consumers do not usually make assumptions
about the origin of goods and services based solely on colour.

It follows that single colours will be accepted in exceptional circumstances only.

Furthermore, single colours may also fall foul of s 3(1)(c) and (d) if they send a
descriptive message or are customary in the trade. The UKIPO Manual of Trade
Marks Practice gives the example of RED for fire fighting services, or GREEN for
ecological goods/services.

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 7. Sounds

This category includes:

 Jingles – Mr Sheen, PC World, Direct Line, McDonald’s

Representation on the Register should not be a problem –sounds can be

represented by either a stave divided into bars and showing a clef, notes and rests
(sheet music) or, more technically, by sound wave patterns. However, following
Sieckmann, a written description will no longer suffice, nor will a simple sequence of
notes because it is not possible to determine the pitch and duration of the sound.
The key case on sound marks is now Shield Mark BV v Joost Kist [2003] ECR I-
14313.

This is the graphical representation of the PC World jingle:

In terms of distinctive character, very simple tunes and well-known pieces of music
are unlikely to denote origin and so will not be registrable.

8. Smells

In the past, several smells have been registered as trade marks, including the smell
of Chanel No 5 perfume and the scent of roses impregnated into Sumitomo tyres(!?).

Representation on the Register is currently a major hurdle for smell marks

following the CJEU’s ruling in Sieckmann v Deutsches Patent-und Markenamt
(Case C-273/00) [2002] ECR I-11737.

The Absolute Grounds for refusal are currently irrelevant in light of the problems
outlined above but, if a smell mark could be represented graphically, it would still
need to be distinctive. Provided the smell is not an inherent or natural characteristic
of the goods or services and is recognised by the public as indicating trade origin,
there should not be a problem here. The UKIPO have indicated that a smell should
be added by the applicant to identify their goods, which would present problems for
perfume manufacturers!

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 9. Taste

Whilst several attempts have been made to register a taste as a trade mark, few
have been successful and registrations are currently unlikely in the light of the
Sieckmann criteria.

Moreover, overcoming the distinctiveness hurdle may be difficult. In Eli Lilly & Co’s
Community Trade Mark Application [2004] ETMR 4, an application to register the
strawberry flavour of a medicine was refused because it would not be regarded by
the public as an indicator of origin. Rather, it would be seen as a means to disguise
the taste of the medicine itself.

10. Gestures and Motions

The UKIPO has accepted for registration by the Derbyshire Building Society a mark,
accompanied by a photograph, which is described as:

“A gesture made by a person by tapping one side of his/her nose with an

extended finger, normally the index finger of the hand on the side of the nose
being tapped.”

Asda has registered its gesture of a person tapping their pocket and more recently
the footballer Gareth Bale was successful in registering his 'Eleven of Hearts' goal
celebration gesture (although he subsequently surrendered his registration):

The UKIPO Manual of Trade Marks Practice tells us that to register gestures and
motions, the representation must satisfy the Sieckmann criteria. Sophisticated
computer graphics will suffice, as will a series of still images.

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 11. Moving Images

A sequence of moving images can now be registered as a trade mark. The Intel
“leap ahead” animated logo has been registered and BT has registered its sand
timer animated sequence:

The UKIPO's guidance states that the representation of the mark should include:
 The fact that the mark is a moving image.
 What the image depicts (that is, what the change in appearance is).
 How many images are involved in the complete sequence of movement.
 What the sequential order is of the images.
 That there is a single (not variable) sequence of movement.

Motion marks that have been accepted are shown below:

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