Introduction to Trade Marking: Protecting Your Brand

30 May

Introduction

Household names such as “Nike”, “Google” and “Facebook” aren’t just globally recognised brands, they’re also protected legal assets. A strong trade mark isn’t just about being recognisable – it also helps protect the business advantages that come with that recognition.

Whether you are launching a start-up or expanding an established business, securing a trade mark can be one of the most commercially valuable actions you can take. A brand can often be just as valuable – if not more – than physical assets. When properly registered, a trade mark not only helps build trust and reinforces identity, but it also creates lasting impact in competitive markets. Understanding how trade marks work under UK law, particularly the Trade Marks Act 1994 (as amended) ("TMA 1994/ the Act"), is essential for protecting and growing a brand effectively.

What is a Trade Mark?

Under Section 1(1) of the TMA 1994, a trade mark is defined as:

“any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.”

In practical terms, this means a trade mark is any sign that can identify the source of goods or services — helping consumers know who they’re buying from and distinguishing one business from another. The definition is deliberately broad to reflect the many ways businesses build and express their identity.

A trade mark can include:

Words (such as brand names or personal names);
logos and symbols;
letters and numerals;
shapes (such as distinctive packaging or product design);
colours, provided they are used in a distinctive and consistent way;
sounds (like musical jingles or tones); and
combinations of any of the above.

To qualify for registration, a mark must be distinctive, meaning it needs to set your goods or services apart from others in the marketplace. Any which are too generic or descriptive (e.g. “Best Coffee” for a café) are unlikely to be accepted, as they don’t point clearly to a single business as the source.

The flexibility of this definition allows modern businesses to be creative with branding, while also offering legal protection across a wide range of brand elements. As long as the sign can be clearly represented and functions as a badge of origin, it may be eligible for protection under UK trade mark law.

Why Register a Trade Mark?

Registering a trade mark grants the owner exclusive rights to use it for specific goods or services. Those rights include the ability to stop others from using identical or similar signs without permission. If they do, the trade mark owner has a clear legal route to stop them, which is far more straightforward than relying on unregistered rights (such as passing off), which are harder to prove and enforce. Registering a trade mark also allows owners to:

display the ® symbol (a strong deterrent to would-be infringers);
add value to a business’s IP portfolio (especially important for investors or exits);
license or sell the mark; and
enforce rights more easily in court.

Not registering your trade mark leaves your brand exposed. Without legal protection, it’s harder to stop others from copying or using similar names or logos, and enforcing your rights can be costly and uncertain. In some cases, you could face the risk of rebranding if someone else registers your mark first.

What seems like a minor step can make the difference between owning your brand and losing control of it.

Registering a Trade Mark: Four Key Stages

Registering a trade mark in the UK is a structured process overseen by the UK Intellectual Property Office (UKIPO). While the process is relatively straightforward, it’s important to understand each step to avoid delays or rejections.

Filing: Submit the application to the UKIPO. Your application should contain the proposed mark and the relevant goods/services (under the NICE classification system) which the mark will be used for. Choosing the correct classification is critical — the trade mark will only be protected in the areas you specify.
Examination: Once submitted, The UKIPO examines whether the application satisfies the statutory requirements and does not fall under absolute grounds of refusal;
Publication: If acceptable, the application is published in the UK Trade Marks Journal. This triggers a two-month opposition period (extendable to three months), during which third parties can object to the registration. If an opposition is filed, the applicant has the opportunity to respond or negotiate a resolution;
Registration: If no opposition is received (or if overcome), the mark proceeds to registration. At this point, it becomes a fully protected registered trade mark, valid for an initial period of ten years. It can then be renewed indefinitely in ten-year increments, offering long-term brand protection — provided it continues to be used and defended when necessary.

Grounds for Refusal

Trade mark applications can be refused on either absolute or relative grounds. Absolute grounds concern the inherent characteristics of the mark itself. For example, if it is descriptive, non-distinctive, or otherwise incapable of functioning as a trade mark. Relative grounds, by contrast, focus on conflicts with earlier existing rights. For instance, where the applied-for mark is identical or confusingly similar to a previously registered trade mark. In essence, absolute grounds are about the nature of the mark, while relative grounds are about its impact on the rights of others.

Absolute Grounds (Section 3): What the Mark is

Absolute grounds concern the inherent characteristics of the mark itself. For example, if it lacks distinctiveness or is inherently descriptive — it will be refused, regardless of whether similar marks exist. These are set out in section 3 of the TMA 1994.

Under s3(1), a trade mark will not be registered if it:

(a) does not comply with s1(1) of the TMA 1994 (referred to above)

(b) is devoid of distinctive character;

(c) consist exclusively of signs or indications that designate the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of goods/services;

(d) consist exclusively of signs which have become customary in the trade;

For example, an application to register the word "Bread" for bakery goods would likely fail under s3(1)(b) and (c) for being descriptive and customary.

Section 3(2) goes on to explain that a mark won't be accepted if it consists only of a shape that:

(a) naturally results from the product,

(b) is needed to make the product work, or

In other words, trade mark protection can’t be used to lock up features that belong to the product itself rather than to brand identity.

Ethical limits also apply. Under Section 3(3), marks that are offensive, misleading, or immoral will be refused. This includes marks that misrepresent a product’s origin (e.g. falsely claiming it’s made in Italy) or promote harmful stereotypes.

Real-world examples of Absolute Grounds

Over the years trade mark registries and Courts have blocked a string of high profile applications on absolute grounds.

Dyson (2007): The ECJ rejected Dyson’s application to register a transparent dust-collection chamber of its vacuum cleaners because the feature was purely functional and not a “sign” capable of graphic representation.
Nestlé (2017): Judges held that the four-finger shape of the Kit Kat bar was not inherently distinctive and that consumers relied on the wrapper, not the shape, to identify origin.
Babybel (2020): the Court of Appeal upheld invalidation of the Babybel red-wax coating mark, finding that the colour and shape description lacked clarity and precision, and was therefore invalid under the absolute-grounds provisions.

Relative Grounds (Section 5): What the Mark Conflicts With

Relative grounds, by contrast, focus on conflicts with earlier existing rights or an "earlier trade mark" (a mark with an earlier filing or priority date). For instance, where the applied-for mark is identical or confusingly similar to a previously registered trade mark. In essence, relative grounds are about a marks impact on the rights of others.

Section 5 of the TMA 1994 sets out the relative grounds for refusal, which are typically triggered by an opposition from a third party, arguing that the new mark is too similar to their own and could confuse consumers or dilute their brand.

These include where the mark is:

s5(1): Is identical to an earlier mark and covers identical goods/services;

s5(2)(a): Is identical to an earlier mark, but for similar goods/services;

s5(2)(b): Is similar to an earlier mark for identical or similar goods/services and may cause confusion;

s5(3): Is similar to a mark with a UK reputation and would take unfair advantage of or damage that reputation.

Real-world examples of Relative Grounds

Swatch vs. Apple (2016): Swatch successfully opposed Apple's registration of the trademark "IWATCH" in the UK; relying on its earlier registration of the mark “ISWATCH”. The UKIPO agreed that the marks were too similar and likely to cause confusion among the public, especially given the similarity of the goods (watches).
LG Electronics (2023): The UKIPO refused LG Electronics’ applications for WASHING TOWER and WASHER TOWER after concluding that consumers would confuse them with an earlier word mark, WASHTOWER, for related domestic-appliance goods.

A Key Point on Enforcement

It’s important to note that the UKIPO will not refuse registration under relative grounds (only absolute). It will be up to businesses with an earlier trade mark to either: oppose the later registration during the opposition period; or launch an invalidation application if the mark has already been accepted on the Trade Marks Journal. Monitoring new applications and maintaining a watch strategy is crucial for trade mark owners — failing to act in time can allow confusing or damaging marks onto the register.

Conclusion

Trade mark registration is not merely a bureaucratic process, but a strategic tool for brand protection and commercial leverage. When done correctly, it offers real commercial value: from protecting against copycats to opening doors for investment, licensing, and growth.

Many applications (even those made by large corporations) can fail because they skip the crucial groundwork like incorrect classification. Understanding the registration process and grounds for refusal allows businesses to safeguard their brand and avoid costly disputes in the future.

Our firm regularly advises clients on brand development, clearance searches, filing strategies, and opposition proceedings . If you would like tailored advice or assistance with any stage of the trade mark lifecycle, please get in touch.

This article is intended for information purposes only and provides a general overview of the relevant legal topic. It does not constitute legal advice and should not be relied upon as such. While we strive for accuracy, the law is subject to change, and we cannot guarantee that the information is current or applicable to specific circumstances. Costigan King accepts no liability for any reliance placed on this material. For further details concerning the subject of the article or for specific advice, please contact a member of our team.