Trade Marks

Absolute Grounds of Refusal

Jane Lambert
3 March 2004

This case note originally appeared on the NIPCLAW website

Under the Trade Marks Act 1994 ("TMA") and the Community Trade Mark Regulation ("CTM regulation") there are two sets of grounds upon which an application to register a trade mark may be refused. These are known respectively as the absolute and relative grounds of refusal. The so called "absolute grounds" are qualifications for registering a mark as a sign whereas the "relative grounds" are grounds upon which an otherwise registrable sign may be denied registration.

Registrable Signs
Art 15 (1) TRIPs provides that any sign or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of another may be registered as a trade mark. These signs may include, in particular, personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs. This provision is echoed by art 2 of the First Trade Marks Directive, s. 1 (1) of the TMA and art. 4 of the CTM Regulation.

"Capable of Distinguishing"
The capacity to distinguish goods or services is fundamental to the concept of a trade mark. Invented words and devices are generally capable of performing that function but there are some that are not either because thy are devoid of distinctive character, they consist of signs or indications that designate the kind, quality, quantity, intended purpose and so on of the goods or services concerned or because they have become customary in the current language or bona fide and established practices of the trade. However, even some of those marks of that kind can in time acquire distinctiveness through sales and advertising. Art 15 (1) of TRIPs recognizes that possibility by permitting member states to make registrability depend on distinctiveness acquired through use in the case of signs that are not inherently capable of distinguishing relevant goods or services.

Signs that are excluded from Registration
Art 3 (1) of the Trade Marks Directive prohibits EC member states from registering the following categories of signs:

signs that cannot constitute a trade mark;
trade marks which are devoid of any distinctive character;
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, or the time of production of the goods or of rendering of the service, or other characteristics of the goods;
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.
signs which consist exclusively of he shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods;
trade marks which are contrary to public policy or to accepted principles of morality;
trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;
trade marks which have not been authorized by the competent authorities and are to be refused or invalidated pursuant to art 6ter of the Paris Convention.

Any such marks that are registered are liable to be declared invalid. However, this prohibition is subject to art 3 (3) of the directive that requires a trade mark not to be refused registration or be declared invalid in accordance with art 3 (1) (b), (c) or (d) above if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character.

Optional Grounds of Refusal:
Member states are also permitted by art 3 (2) of the directive to provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that:

the use of that trade mark may be prohibited pursuant to provisions of law other than trade mark law of the member state concerned or of the EC;
the trade mark covers a sign of high symbolic value, in particular a religious symbol;
the trade mark includes badges, emblems and escutcheons (other than those covered by art 6ter of the Paris Convention) which are of Public interest, unless the consent of the appropriate authorities to its registration has been given in conformity with the legislation of the member state; and
the application for registration of the trade mark was made in Bad Faith by the applicant.

Signs which cannot constitute a Trade Mark
Art 3 (1) (a), (b), (c) and (d) and (3) of the directive are implemented in the UK by s. 3 (1) of the TMA. The equivalent articles in the CTM Regulation is art 7 (1) (a), (b), (c) and (d) and (3). In Case C-299/99, Koninklijke Philips Electronics NV v Remington Consumer Products Ltd ("Philshave"). the Court of Appeal asked European Court of Justice ("ECJ") whether there is a category of marks that is not excluded from registration by art 3 (1) (b ), (c) and (d) and art 3 (3) of the directive but which is nonetheless excluded from registration by art 3 (1) (a) on the ground that such marks are incapable of distinguishing the goods of one undertaking from those of others. The ECJ held that there was not.

Trade Marks which are devoid of any Distinctive Character
In British Sugar Plc v James Robertson and Sons Ltd [1996] RPC 281 Jacob J suggested that a trade mark that is devoid of any distinctive character is the sort which cannot do the job of distinguishing without first educating the public that it is a trade mark. In this context, the Court of First Instance observed in Baby-Dry, Case C-383/99P Procter & Gamble v OHIM [2002] ETMR 22 that the distinctive character of a sign must be assessed in relation to the goods or services in respect of which registration is claimed. The Trade Marks Registry's practice in this regard is set out in Chapter 6 its Work Manual.

Signs or Indications of Characteristics of Goods or Services
In Baby-Dry, the ECJ said at paragraph [39]

"The signs and indications referred to in article 7(1)(c) of [the CTM Regulation] are .... only those which may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics."

The basic message of this case is, as Pumfrey J remarked in West v Fuller Smith & Turner Plc [2003] EWCA Civ 48 that the hurdle that an applicant has to surmount is not a high one. The ECJ continued in Baby Dry that in order to assess whether a sign such as a word combination like 'BABY-DRY is capable of distinctiveness, it is necessary to put oneself in the shoes of a consumer. In the case before the court, given that the goods concerned were babies' nappies, the determination to be made depended on whether the word combination in question may be viewed as a normal way of referring to the goods or of representing their essential characteristics in common parlance. While the word combination did unquestionably allude to the function which the goods were supposed to fulfil, it did not satisfy the disqualifying criteria set forth above. The court's reasoning appears to be that while each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies' nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics. Thus, the word combination could not be regarded as exhibiting, as a whole, descriptive character. It was a lexical invention bestowing distinctive power on the mark so formed that may not be refused registration under article 7 (1 ) (c) of the CTM Regulation. Again, the Registry practice with relation to signs or indications of characteristics of goods or services is set out in Chapter 6 of the Work Manual.

Signs or Indications which have become customary in the Current Language or in the bona fide and established Practices of the Trade.
According to the Work Manual, this paragraph relates to such devices as grapes for wine, stars for brandy and crowns or stars for hotels that are common to large numbers of suppliers. It does not apply to representations of mechanics for repair services or chefs for restaurants. It is usually a question of evidence. In West, for instance, the trial judge found that there was no evidence that the words "extra special beer" or "bitter" had been abbreviated to ESB in the United Kingdom, though there was some suggestion that that might have happened in America.

The Proviso
In Healing Herbs Ltd. v Bach Flower Remedies Ltd. [2000] RPC 513. Morritt and Chadwick LJJ expressed the view that a mark falling within paragraphs (b), (c) or (d) above could be registered only if the common or descriptive meaning of a word had been displaced by use. As Morritt LJ put it at para 45:

"What is necessary, in the words of the Act and the Directive, is that the word or mark should "distinguish the goods or services of one undertaking from those of other undertakings" (s1(1)) so as "to guarantee the trade mark as an indication of origin" (10th Recital to the Directive). If to a real or hypothetical individual a word or mark is ambiguous in the sense that it may be distinctive or descriptive then it cannot comply with the requirements of the Act for it will not provide the necessary distinction or guarantee. It is in that sense that a common or descriptive meaning must be displaced."

That appears to be no longer the law. After considering the Philips case the Court of Appeal held in West that there is no longer any requirement that a mark must be capable of distinguishing and not devoid of distinctive character. The effect is, as Arden LJ noted at paragraph [69] of West "the territory that can now be occupied by registered trade marks has been significantly enlarged by the 1994 Act."

Signs which consist exclusively of the Shape which results from the Nature of the Goods themselves, the Shape of Goods which is necessary to obtain a Technical Result, or the Shape which gives substantial Value to the Goods
Art 3 (1) (e) of the directive is implemented by s.3 (2) of the TMA. The equivalent provision of the CTM regulation is art 7 (1) (e). In Philishave the Court of Appeal enquired whether the shape of an article (being the article in respect of which the sign is registered) is capable of distinguishing only if it contains some capricious addition, such as an embellishment which has no functional purpose. The court replied the shape of the article in respect of which the sign is registered does not require any capricious addition, such as an embellishment without any functional purpose. However, the ECJ added that a sign consisting exclusively of the shape of a product cannot be registered as a mark if it can be established that the essential functional features of that shape are attributable only to a technical result. An objection on that ground cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained.

Trade Marks which are contrary to Public Policy or to accepted Principles of Morality
Art 3 (1) (f) of the directive is implemented by s.3 (3) (a) of the TMA and the equivalent provision of the CTM regulation is art 7 (1) (f). According to the Work Manual, signs that have been refused by the Trade Marks Registry include "BOLOX" and "SOSUMI copycat fragrances". Sings that have been accepted include "BONK", "Old Farts" and "EROTICA". Signs that have been refused by OHIM include "BALLE 33", "BILLCLINTON", "BOLLOX", "Fidel Castro", "Fuck of the Year" and "Johannes Paul II".

Trade Marks which are of such a Nature as to deceive the Public, for instance as to the Nature, Quality or Geographical Origin of the Goods or Service
Art 3 (1) (g) is implemented in the UK by s.3 (3) (b) of the Act and the equivalent provision of the CTM regulation is art 7 (1) (g). According to the Work Manual objection will be taken only where there is a real possibility of deception, the test being whether there would be any possible advantage to any trader from using the sign on anything other than goods with the characteristics conveyed by the mark. An example of a CTM application that has been refused under this ground is Port Autonome de Marseille's application where the sign in question was a roundel of galley on green waves set against a royal blue background with gold stars.

Trade Marks whose use is prohibited by National or EC Law
Pursuant to art 3 (2) (a) of the directive Parliament has provided that a trade mark may not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of Community law.(s.3 (4) TMA). Grounds upon which objection might be taken could include false geographical indications contrary to Regulation 2081/92, Regulation 1493/1999 or Regulation 1576/89. Art 7 (1) (j) of the CTM regulation specifically precludes the registration of trade marks for wines which contain or consist of a geographical indication identifying wines, or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin.

Specially protected Emblems
S.3 (5) and s.4 of the Act proscribes the registration of marks in respect of the following specially protected emblems:

	the royal arms, any of their principal armorial bearings or colourably similar insignia or device, any representation of the royal crown or any of the royal flags, a representation of the sovereign or any member of the royal family, or any colourable imitation thereof, or words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorization without royal consent (s.4 (1) TMA);
	the union jack and flags of England, Scotland, Wales, Northern Ireland and the Isle of Man if it appears to the registrar that the use of the trade mark would be misleading or grossly offensive (s.4 (2));
	certain national and international flags and emblems (s.4 (3));
	coats of arms and insignia and colourably similar arms and insignia (s.4 (4)); and
	specified Olympic symbols without consent (s.4 (5)).

These sections implement art 3 (1) (h) and art 3 (2) (b) and (c) of the directive.

Art 7 (1) (h) of the CTM regulation prohibits the registration of trade marks which have not been authorized by the competent authorities pursuant to art 6ter of the Paris Convention. Art 7 (1) (i) also forbids the registration of badges, emblems or escutcheons (other than those covered by the above article) of particular public interest except where consent is given.

Bad Faith
S.3 (6) of the TMA provides that a trade mark shall not be registered if or to the extent that the application is made in bad faith. Neither the directive nor the statute gives any guidance as to what the term means in practice. Lindsay J refused to attempt to define it in In Gromax Plasticulture Ltd v. Don & Low Nonwovens Ltd. [1999] RPC 367, [1998] EWHC (Patents) 316 but expressed the view at 379 that it includes dishonesty and also dealings that fall short of the standards of acceptable commercial behaviour. In Demon Ale [2000] RPC 345 Mr Geoffrey Hobbs QC said that it can involve behaviour that "otherwise involves no breach of any duty, obligation, prohibition or requirement that is legally binding". In DAWAAT ((10 June 2002) he added that s.(6) allows objections on the ground of bad faith to be raised in relation to matters arising between applicants and third parties as well as in relation to matters arising between applicants and the Registrar.

Applications Jane Lambert Applying for a Trade Mark 24 Feb 2004 Absolute Grounds of Refusal Case Notes Jane Lambert "Companyline" 12 July 2000 Jane Lambert "Europremium" Deutsche Post v OHIM 29 Jan 2005 Jane Lambert Healing Herbs Ltd v Bach Flower Remedies Ltd. (Appeal and Decision at First Instance) 15 Nov 1999 Jane Lambert Dualit's TM Appeal, Lloyd J's Decision 28 July 1999 The Law Jane Lambert The Trade Marks Act 1994 25 Feb 2004 Jane Lambert The Trade Marks Rules 2000 3 May 2000 Jane Lambert Community Trade Marks 9 April 2003 Relative Grounds of Refusal Jane Lambert Relative Grounds of Refusal 3 March 2004							Relevant Links Legislation First Trade Marks Directive Community Trade Mark Regulation Trade Marks Act 1994 Cases European Court Joined Cases Joined Cases C-53/01 to C-55/01, Linde AG and another v OHIM ECJ 8 April 2003 (ECJ website) C299/99 Philishave, Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. (Electric shaver), ECJ 18 June 2002 OHIM website C218/01 Henkel KGaA v OHIM (Three Dimensional marks) ECJ 12 Feb 2004 (ECJ website) C-191/01 P,-DOUBLEMINT Wrigley v OGIM 23 Oct 2003 OHIM website C-104/00 P, COMPANYLINE, DKV Deutsche Krankenversicherung AG v OHIM 19 Sep 2002 OHIM website C-383/99 BABY DRY Procter & Gamble Company 20 Sep 2001 OHIM website British Sugar Plc v James Robertson and Sons Ltd [1996] RPC 28 English Courts West v Fuller Smith & Turner Plc [2003] EWCA Civ 48 Bach Flower Remedies Ltd. v Healing Herbs Ltd. [2000] RPC 513 Gromax Plasticulture Ltd v. Don & Low Nonwovens Ltd [1998] EWHC Patents 316 Dualit Ltd's (Toaster Shapes) Trade Mark Applications [1999] RPC 890 Appointed Person Demon Ale TM Application Geoffrey Hobbs QC, 28 Sep 1999 (Patent Office website) DAWAAT, LT Overseas Ltd v A1 Trading Geoffrey Hobbs QC 10 June 2002 (Patent Office website)