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| Jane Lambert |
- The proposed mark appears to be incapable of distinguishing the goods or services of its owner's undertaking from those of other undertakings (s.3 (1));
- The proposed mark consists exclusively of the shape or other characteristic of the goods themselves or of goods that are necessary to obtain a technical effect or which give substantial value to the goods (s.3 (2));
- The proposed mark is contrary to public policy, accepted principles of morality or of such a nature as to deceive the public (for instance, as to the nature, quality or geographical origin of the goods or service (s.3 (3));
- The use of the proposed mark is prohibited in the UK by an enactment or rule of law (s.3 (4));
- The registration of the proposed mark is prohibited by an enactment, rule of law or international agreement to which the UK is party for the protection of designations of origing, eographical indications (s.3 (4A)), traditional terms for wine or traditional specialities guaranteed (s.3.4B) and plant variety rights (s.3 (C) and (D));
- The proposed mark incorporates or consists of certain national emblems (s.3 (5) and s.4); or
- The application is made in bad faith (s.3 (6)).
"The following shall not be registered—
(a) signs which do not satisfy the requirements of section 1 (1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it."
The above section is similar to art 7 (1) (a), (b), (c) and (d) and art 7 (3) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (codification) (Text with EEA relevance) OJ L 154, 16.6.2017, pp. 1–99 ("the EU Trade Mark Regulation").
The above proviso may apply to applications for the registration of trade marks that fall within s.3 (1) (b), (c) or (d) but not to those in s.3 (1) (a). Trade marks that fall within s.3 (1) (b), (c) and (d) tend to lack distinctive character, but they may acquire such character through sales and advertising. By contrast, a trade mark that lacks the following requirements can never acquire a distinctive character:
"In this Act 'trade mark' means any sign which is capable—The Court of Justice of the European Union considered art 7 (1) (b) of the EU Trade Mark Regulation in Case C-265/09 P OHIM v BORCO-Marken-Import Matthiesen GmbH & Co KG [2010] EUECJ C-265/9, EU: C:2010:508 between paras [29] and [45]. It considered art 7 (1) (c) in Case C-51/10P Agencja Wydawnicza Technopol sp. z o.o. v OHIM [2011] ETMR 34, EU: C:2011:139, [2011] EUECJ C-51/10, ECLI:EU: C:2011:139 between paras [33] and [50]. Mr Justice Arnold (as he then was) referred to both judgments in Starbucks (HK) Ltd and others v British Sky Broadcasting Group Plc and others [2012] EWHC 3074 (Ch), [2013] FSR 29 between paras [90] and [97]. Her Honour Judge Melissa Clarke applied the principles discerned by Mr Justice Arnold in Dryrobe Ltd v Caesr Group Ltd (t/a D-ROBE OUTDOORS) [2025] EWHC 3167 (IPEC) on 4 Dec 2025.
(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
(b) of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.
"A sign shall not be registered as a trade mark if it consists exclusively of—
(a) the shape, or another characteristic, which results from the nature of the goods themselves,
(b) the shape, or another characteristic, of goods which is necessary to obtain a technical result, or
(c) the shape, or another characteristic, which gives substantial value to the goods."
"A trade mark shall not be registered if it is—
(a) contrary to public policy or to accepted principles of morality, or
(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service)."
The corresponding provisions of the EU Trade Mark Regulation are art 7 (1) (f) and (g).
The Court of Justice considered art 3 (1) (g) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, OJ L 040, 11/02/1989 P. 1 - 7, which s.3 (3) (b) of the Trade Marks Act 1994 implemented in the UK in C-296.04 Elizabeth Emanuel v Continental Shelf 128 Ltd, It held at para [47] of its judgment that art 4 (1) (g) of the Directive “presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived”. There must be a real possibility of deception of the public.
"A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law... other than law relating to trade marks".
The above provision was considered by the Supreme Court in Dairy UK Ltd v Oatly AB [2026] UKSC 4. The Justices held that the registration of the mark POST MILK GENERATION in relation to oat-based products was invalid because it was contrary to Part III of Annex VII of EU Regulation 1308/2013, which specifically prohibited the use of the word "milk" for products not made exclusively of dairy milk. For further information, see my articles The POST MILK GENERATION Appeal to the Supreme Court- Dairy (UK) Ltd v Oatly AB 19 Feb 2026 NIPC Law and Interpretation of Assimilated Law - Dairy (UK) Ltd v Oatly AB 23 Feb 2026 IP After Brexit.
Ground 5: The registration of the proposed mark is prohibited by an enactment, rule of law or international agreement to which the UK is party for the protection of designations of origin, geographical indications, traditional terms for wine or traditional specialities guaranteed or plant variety rights
The following subsections of s.4 provide as follows:"(4A) A trade mark is not to be registered if its registration is prohibited by or under—(a) any enactment or rule of law, or(4B) A trade mark is not to be registered if its registration is prohibited by or under—
(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(c) any international agreement to which the United Kingdom ... is a party,
providing for the protection of designations of origin or geographical indications.(a) any enactment or rule of law, or(4C) A trade mark is not to be registered if it—
(b)any international agreement to which the United Kingdom is a party,
providing for the protection of traditional terms for wine or traditional specialities guaranteed.(a) consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and(4D) Subsection (4C)(a) refers to registration in accordance with any—
(b) is in respect of plant varieties of the same or closely related species.(a) enactment or rule of law, or
(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(c) international agreement to which the United Kingdom ... is a party,
providing for the protection of plant variety rights."
Those subsections are equivalent to paras (j), (k), (l) and (m) of art 7 of the EU Trade Mark Regulation.
Ground 6: The proposed mark incorporates or consists of certain national emblems specified, or referred to, in s.4
S.3 (5) provides that a trade mark shall not be registered in the cases specified, or referred to, in s.4 (specially protected emblems). That section provides as follows:
"(1) A trade mark which consists of or contains—The equivalent provisions of the EU Trade Mark Regulation are art 7 (h) and (i).(a)the Royal arms, or any of the principal armorial bearings of the Royal arms, or any insignia or device so nearly resembling the Royal arms or any such armorial bearing as to be likely to be mistaken for them or it,shall not be registered unless it appears to the registrar that consent has been given by or on behalf of Her Majesty or, as the case may be, the relevant member of the Royal family.
(b) a representation of the Royal crown or any of the Royal flags,
(c) a representation of Her Majesty or any member of the Royal family, or any colourable imitation thereof, or
(d) words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation,
(2) A trade mark which consists of or contains a representation of—(a) the national flag of the United Kingdom (commonly known as the Union Jack), orProvision may be made by rules identifying the flags to which paragraph (b) applies.
(b) the flag of England, Wales, Scotland, Northern Ireland or the Isle of Man,
shall not be registered if it appears to the registrar that the use of the trade mark would be misleading or grossly offensive.
(3) A trade mark shall not be registered in the cases specified in—section 57 (national emblems, &c. of Convention countries), or(4) Provision may be made by rules prohibiting in such cases as may be prescribed the registration of a trade mark which consists of or contains—
section 58 (emblems, &c. of certain international organisations).(a) arms to which a person is entitled by virtue of a grant of arms by the Crown, orunless it appears to the registrar that consent has been given by or on behalf of that person.
(b) insignia so nearly resembling such arms as to be likely to be mistaken for them,
Where such a mark is registered, nothing in this Act shall be construed as authorising its use in any way contrary to the laws of arms.
(5) A trade mark which consists of or contains a controlled representation within the meaning of the Olympic Symbol etc. (Protection) Act 1995 shall not be registered unless it appears to the registrar—(a) that the application is made by the person for the time being appointed under section 1(2) of the Olympic Symbol etc. (Protection) Act 1995 (power of Secretary of State to appoint a person as the proprietor of the Olympics association right), or
(b) that consent has been given by or on behalf of the person mentioned in paragraph (a) above."
"A trade mark shall not be registered if or to the extent that the application is made in bad faith."There is no statutory definition of the words "bad faith", but the Supreme Court considered them in SkyKick UK Ltd and another v Sky Ltd and others (Rev1) [2024] UKSC 36, [2025] Bus LR 251, which I discussed in The Supreme Court's Judgment in SkyKick v Sky on 19 Dec 2024 in NIPC Law.
