A trademark is usually refused because it describes what you sell, isn't distinctive enough to tell customers who you are, or isn't defined clearly enough to be one fixed sign. A registration that gets through can still be struck off later on the same grounds. These trademark refusal cases show where the UK courts draw those lines, and what they mean in practice before you register a trademark.
What is a trademark refusal, and why does it happen?
In simple terms, most refusals come down to one of four problems:
- It describes the goods or services. A word that simply tells customers what the product is, or what it does, is usually left free for every business to use.
- It isn't distinctive. A trademark has to tell customers who the goods come from. If people see it as a description, a shape or a common phrase, it often fails, unless years of use have taught them to rely on it (what the law calls acquired distinctiveness).
- It isn't one clear sign. The register has to show exactly what's protected. A picture and a written description that allow lots of different versions won't get through.
- Another rule gets in the way. Some words are reserved by other laws, and putting them inside a trademark doesn't get round that.
These problems are about the mark itself. A clash with someone else's earlier trademark is a separate fight, usually through an opposition.
Descriptive and non-distinctive marks: how far does protection go?
Eastenders v Fuller Smith & Turner
Fuller's E.S.B. trademark was challenged because some people read the letters as short for Extra Special Bitter. The Court of Appeal confirmed it was validly registered, but upheld its removal for anything other than bitter beer, because it hadn't been used for those goods. A name can work as a trademark even if some customers use it descriptively, as long as enough of them link it to one trader.
Summary coming soonShorts International v Google
The Court of Appeal upheld a ruling that YouTube Shorts did not infringe Shorts International's trademarks. The word "shorts" was descriptive, and the logo elements that gave the marks their limited distinctiveness weren't copied. A descriptive word plus a modest logo gives you narrow protection, not ownership of the word.
Read our summaryLondon Taxi Corporation v Frazer-Nash
The shape of the traditional black cab could not be protected as a trademark, because consumers did not see the shape itself as identifying a single manufacturer. A shape people recognise as a taxi isn't the same as a shape they link to one maker.
Read our summaryCan other laws block a word in your trademark?
Dairy UK v Oatly
Oatly could not keep its POST MILK GENERATION trademark registered for oat-based drinks and foods. Agricultural marketing rules reserve the word milk for dairy products, and the court held that a trademark counts as a designation caught by that restriction. Putting a reserved word inside a trademark doesn't get round the rules that reserve it.
Read our summaryDairy UK v Oatly
The Supreme Court ruled that the POST MILK GENERATION trademark unlawfully used the protected term milk for non-dairy products, and that it could not rely on the exception for descriptive marks. Using a protected dairy word anywhere in a trademark for plant-based goods can be enough to invalidate it.
Read our summaryIs your mark one clear sign?
Thom Browne Inc v Adidas
The Court of Appeal upheld the invalidation of six adidas three-stripe trademarks. Their written descriptions allowed for too many variations of the stripes that the pictures didn't show, so they didn't count as a single, clear sign. A trademark's written description can't promise more than its picture shows.
Read our summaryBabek v Iceland Foods
Iceland Foods challenged the validity of Babek's gold oval BABEK logo trademark and failed, because the written colour description was consistent with the picture of the logo. A colour description attached to a logo only needs to describe the picture, not expand it.
Read our summaryNestlé v Mars
Nestlé could not rescue its application for the plain shape of a POLO mint by adding colour and size limits after filing. That would have changed the identity of the mark, not just narrowed the goods or rights. Define the exact mark, including colour and size if they matter, before you file.
Summary coming soonComic Enterprises v Twentieth Century Fox
The Court of Appeal ruled that registering several very similar trademarks together as a series under UK law is a valid practice, and rejected a late challenge to the validity of Comic Enterprises' registration. A series mark, several close variants under one number, is a sound way to cover minor differences in a logo or name.
Read our summaryOnce it's registered: use it, and know its limits
easyGroup v easyfundraising
easyGroup's easylife and easy.com marks survived challenges to have them removed for non-use, but easyfundraising did not infringe any of easyGroup's marks. A shared prefix like easy doesn't stop a court finding the overall names too different to confuse customers.
Read our summaryDatacard v Eagle Technologies
A printer-ribbon supplier knocked out two of a rival's patents, but was found to have infringed the rival's trademark by describing its compatible ribbons confusingly on its website and packaging before 2010. Saying your product is compatible with a brand is safer than using that brand's name as if it were your own sub-brand.
Summary coming soonWhat I’d take from these trademark refusal cases
- 1What I'd take from this is that the words you choose decide how much protection you get. A descriptive name can sometimes be registered with a logo, but the protection is often narrow.
- 2Being recognised isn't the same as being distinctive. Customers have to rely on the sign to tell them who's behind the product.
- 3Get the filing right first time. Colours, sizes and written descriptions usually can't be fixed after you file.
- 4Check the rules outside trademark law. Some words are reserved for particular products, and a trademark doesn't change that.
- 5A registration is only as strong as your use of it. Goods you never sell under the mark can be cut from it.
Before you file, a trademark search shows what's already on the register, and a trademark clearance audit looks at whether the name itself is likely to be accepted and what it would actually protect. When you're ready, we can help you register a trademark that covers what you really sell. If your brand is a logo, we can help you trademark a logo so the picture and any colour description match.
Book a free call, email enquiries@thetrademarkhelpline.com or ring 0161 833 5400.
Related questions
This page is for information purposes only and does not constitute trademark advice or guidance. Case summaries are drawn from published UK judgments; summaries drafted with AI assistance and checked by The Trademark Helpline (how we write these). Last reviewed 30 October 2026.
