If the IPO objects to your trademark, you usually have options. A trademark objection is not a refusal. It’s the examiner telling you what stands in the way of registration, and you normally get two months to respond: by arguing the point, filing evidence, narrowing your list of goods and services, splitting the application, or asking for a hearing. Many objections can be overcome. The ones that end badly are often the ones nobody answered.
I sit on hearings at the IPO, and a result this week was a good reminder of why they matter.
What happened at our recent ex parte hearing?
In May 2026, two applications we act on had initially been refused under section 3(1)(b) of the Trade Marks Act 1994, which covers marks said to be devoid of distinctive character. The examiner’s view was that the signs weren’t distinctive because they could have alternative meanings as acronyms.
We asked for an ex parte hearing, which simply means a hearing with the IPO alone, with no opposing party. Our argument was that the examiner’s reliance on case law stretched the principles too far. The alternative meanings weren’t how the average consumer would naturally read the signs in the real commercial context. The applications covered tourism and souvenir merchandise, where the geographic significance of the signs was obvious and commercially logical. Context matters, and a theoretical alternative meaning isn’t, on its own, a reason to strip a mark of its distinctiveness.
Both applications have now proceeded to acceptance. It’s a good reminder that an objection isn’t always the end of the road, and that well-prepared oral submissions can make a real difference. When an objection arises on a mark we look after, our trademark representation and protection service means the examiner’s letters come to us, and you get experienced guidance on the response rather than a deadline landing in your inbox.
What is a trademark objection?
A trademark objection is a problem the examiner raises in the examination report, the letter the IPO sends after checking your application, and one of the stages of UK trademark registration where applications can stall. According to GOV.UK, the report usually arrives within 2 to 3 weeks of filing, and you then have 2 months to resolve any objections.
Objections are almost always about the mark itself, known as absolute grounds. The main ones sit in section 3 of the Act:
- Not distinctive: the sign doesn’t work as a badge of origin, the thing that tells a customer who the goods come from.
- Descriptive: it describes the kind, quality, purpose or geographical origin of what you sell.
- Customary: it’s a term the trade already uses as a matter of course.
The easiest way to picture it is a name badge. The examiner is asking one question: when a customer sees this on the product, will they read it as the name of a business, or just as a description of the product? “Fresh Bread” on a loaf is a description. A made-up word on a loaf is a name badge.
Earlier trademarks are handled differently. Since 2007, the IPO has drawn similar earlier marks to your attention and notified their owners if you go ahead, rather than blocking your application. You get one chance to persuade the examiner not to notify, but, as the IPO’s examination guide explains, you can’t ask for a hearing on those notifications. If the owner objects, that becomes an opposition, which is a different process.
What can you do if the IPO objects to your trademark?
There’s usually more than one route, and the right one depends on what the objection actually says. The IPO sets the options out in its guidance on responding to an examination objection. Step by step, this is how I’d work through them.
- Read the report properly and diary the deadline. Two months goes quickly. If you need longer, you can ask for an extension in writing, with reasons, before the time runs out. If the deadline has already passed, form TM9R lets you ask for a retrospective extension within two months.
- Check whether it’s a partial objection. Often the objection only hits some of the goods or services. You can delete the problem terms, or add a limitation that takes them outside the objection, and let the rest go forward. If you don’t respond to a partial objection, the application can proceed for the acceptable terms only.
- Consider dividing the application. Form TM12 splits it in two, so the classes that are acceptable can be published while you argue about the rest.
- Talk to the examiner. You can discuss the objection by phone or in writing. Sometimes a short, well-reasoned submission is all it takes.
- File evidence of use if the mark has earned its distinctiveness. Where the objection is about distinctiveness, evidence that customers already recognise the mark as yours can overcome it. It has to show use in the UK before the application date, usually in a witness statement with turnover, advertising spend and examples. Our guide to acquired distinctiveness covers how that works.
- Ask for a hearing. If you think the examiner has got it wrong, you can put your case to a hearing officer.
If the mark is a word the trade already uses routinely, no amount of evidence will help. That’s worth knowing early, because it can change the decision from “argue” to “rethink the name”.
What happens at an ex parte hearing?
A senior officer at the IPO, the hearing officer, decides whether the original examiner was right and what, if anything, can be done to resolve things. The examination guide says hearings are normally held by telephone, can also take place by video or in person at the IPO in Newport, and there’s no charge. The hearing officer considers the examiner’s objections and your submissions, before and during the hearing, then decides whether the objection is maintained or waived and sends a hearing report.
In my view, preparation is what makes the difference. What worked for us in May was a clear argument about how the average consumer actually sees the mark, in the market it will actually be used in. “I really like the name” doesn’t carry much weight. “Here is why the customer reads this as a brand, and here is the case law that supports it” does.
What if the hearing doesn’t go your way?
You can appeal. First you ask the IPO for a written statement of grounds on form TM5, which sets out the legal basis for the refusal. You can then appeal to the Appointed Person, whose decision is final and which the IPO describes as relatively quick and informal, or to the High Court, which is more formal and costs more because counsel has to be instructed. The hearings and appeals process is also summarised on GOV.UK.
Whether an appeal is worth it is a commercial question as much as a legal one. Sometimes the better outcome is a narrower specification that registers now, or a stronger version of the mark filed fresh.
What does this mean for a small business?
An objection feels like a verdict when it lands, especially if you’ve already printed the packaging. It usually isn’t one. But the quality of the response decides the outcome, so it’s worth getting help before you reply, not after the deadline has passed.
Better still is not getting the objection in the first place. At The Trademark Helpline, a full trademark consultation and brand clearance audit is carried out before anything is filed, because the aim is the best chance of registration, not just getting an application sent. That’s where our registration work starts, and the official UK IPO fee is from £205 for one class. As our founder Jonathan Paton puts it, the most expensive application is the one that fails.
If you haven’t filed yet, our free trademark search is a sensible first look at the UK register. If you’re already struggling with an objection, please feel free to reach out: book a free call, ring 0161 833 5400 or email enquiries@thetrademarkhelpline.com.
Related questions
- Can I register a trademark myself, or do I need an attorney?
- Can someone trademark a name I’m already using and force me to stop?
- What are trademark classes, and which ones do I need?
This article is for information purposes only and does not constitute trademark advice or guidance. Last reviewed 25 September 2026. First shared as a LinkedIn post.
Questions about this
What is an ex parte hearing at the IPO?
It is a hearing between the applicant and the IPO alone, with no opposing party, where a senior hearing officer decides whether the examiner’s objection was right. Hearings are normally held by telephone, can also take place by video or in person in Newport, and there is no charge. The officer considers the objections and your submissions, then decides whether the objection is maintained or waived and sends a hearing report.
Answered by Alex Pugh, Brand Protection ConsultantHow long do I have to respond to a trademark objection?
Usually two months from the examination report, which GOV.UK says normally arrives within two to three weeks of filing. If you need longer, you can ask for an extension in writing, with reasons, before the deadline passes. If it has already passed, form TM9R lets you request a retrospective extension within two months. Diarying the date as soon as the report arrives keeps every option open.
Answered by Alex Pugh, Brand Protection ConsultantWhat can I do if the IPO objects to only some of my goods and services?
A partial objection leaves several options. You can delete the problem terms, or add a limitation that takes them outside the objection, and let the rest go forward. Form TM12 divides the application so the acceptable classes can be published while you argue about the rest. If you do not respond to a partial objection, the application can proceed for the acceptable terms only, rather than being lost entirely.
Answered by Alex Pugh, Brand Protection Consultant
