Trade Marks

Grounds of Refusal

John Lambert
Sep 2002

This article first appeared on the NIPCLAW website

Any sign capable of being represented graphically and of distinguishing goods or services of one undertaking from those of others may be registered under the Trade Marks Act 1994 (or, as the case may be, as a Community trade mark ("CTM") unless it falls within one of the absolute or relative grounds of refusal provided by the Act or CTM regulation ("CTMR").

Absolute Grounds of Refusal
S.3 of the Act (and art 7 of the CTMR) exclude the following from registration:

1. signs and marks that are devoid of distinctive character;

2. signs consisting exclusively of shapes which result from the nature of the goods themselves, which are necessary to obtain a technical result or which give substantial value to goods;

3. trade marks that are contrary to public policy or accepted principles of morality or of such a nature as to deceive the public;

4. those whose use is prohibited in the United Kingdom by any provision of national or Community law; and

5. signs consisting of specially protected emblems more particularly mentioned in s.4.

Signs devoid of Distinctive Character
These fall into two categories:

	signs that fall outside the statutory definition of trade mark (s.3 (1) (a)); and
	trade marks that are devoid of distinctive character, descriptive of goods or services or common to the trade (s.3 (1) (b), (c) and (d)).

The distinction between those two categories is that a trade mark in the second category will not be refused registration in fact it acquires a distinctive character as a result of the use made of it if before the date of application for registration.

Signs that fall outside the Statutory Definition of a Trade Mark
A trade mark is defined by s.1 (1) "as any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings." Specific examples provided by the section include words (including personal names), designs, letters, numerals or the shape of goods or their packaging. S.3 (1) (a) precludes from registration signs that do not satisfy the requirements s. 1 (1). The proviso that saves other marks devoid of distinctive character by showing evidence of having become distinctive through use cannot avail a sign that falls within this exclusion.

Trade Marks devoid of Distinctive Character
Trade marks that may not be registered in the absence of evidence that they have in fact become distinctive through use are:

	trade marks which are devoid of any distinctive character (s.3 (1) (b));
	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 (s.3 (1) (c)); and
	those 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 (s.3 (1) (d)).

Signs consisting of certain Shapes
A sign may not be registered by reason of s.3 (2) if it consists exclusively of a shape:

1. which results from the nature of the goods themselves,

2. of goods which is necessary to obtain a technical result, or

3. which gives substantial value to the goods.

Public Policy, Morality or Tendency to deceive
A trade mark is not to be registered if it is contrary to public policy or to 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)).

Use prohibited by National or Community Law
S.3 (4) prohibits registration of a trade mark if and to the extent that its use is prohibited in the United Kingdom by national or Community law.

Specially protected flags or Emblems
Trade marks consisting of, or containing, the crown, royal coats of arms, representations of members of the royal family, their flags and arms and any words, words, letters or devices suggesting royal patronage or connection may not be registered without the consent of the Queen or member of the royal family concerned (s.4 (1)). Neither may trade marks consisting of or containing the union jack or national flags of the components of the United Kingdom if their use would be misleading or grossly offensive (s.4 (2)). Nor may trade marks consisting of, or containing other national flags and emblems (s.4 (3)), other coats of arms and insignia without their owners' consent (s.4 (4)) or Olympic insignia.

Relative Grounds of Refusal
S.5 of the TMA (and art 8 of the CTMR) prohibit registration of a trade mark in any of the following circumstances:

	Conflict with an identical earlier mark that is registered for identical goods or services: S.5 (1) prohibits registration of a trade mark that is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the S.6 (1) is protected.
	Likelihood of confusion arising from similarity with an earlier mark and goods and services for which that earlier mark is registered: S.5 (2) prohibits registration of a trade mark where there exists a likelihood of confusion on the part of the public, (including the likelihood of association with an earlier trade mark) either because the mark sought to be registered is identical with the earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or because the mark sought to be registered is similar to the earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected.
	Use of the mark sought to be registered would take unfair advantage of or be detrimental to a mark that has a reputation in the UK or EC: S.5 (3) prohibits registration of a trade mark that is identical with or similar to an earlier trade mark that has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) but which is registered for different goods and services and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
	Use may be prevented by an action for passing-off: S.5 (4) (a) prohibits registration of a trade mark whose use in the United Kingdom could be prevented by an action of passing off or other cause of action.
	Use may be prevented by the law of copyright or designs: S.5 (4) (b) prohibits registration of a trade mark whose use in the United Kingdom could be prevented by an action for infringement of copyright, design right or the right in a registered design.

A mark falling within any of the above categories may still be registered if the owner of the earlier trade mark or right of action consents (s.5 (5)). Further, an application may not be refused even though there is an earlier trade mark or use could be prevented by an action for passing off, in the absence of opposition from the registered proprietor or other person entitled to sue for passing off, if the applicant for registration satisfies the registrar that there has been what could have amounted to "honest concurrent use" of the mark sought to be registered for the purposes of s.12 (2) of the Trade Marks Act 1938 (s.7 (2)).

Meaning of "Earlier Trade Mark"
S.6 (1) of the Trade Marks Act 1994 defines an "earlier trade mark" as:

"(a) a registered trade mark, international trade mark (UK) or Community trade mark which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks,
(b) a Community trade mark which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK), or
(c) a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention as a well known trade mark."

References to "registered trade marks" in paragraphs (a) and (b) include applications for registered trade marks by virtue of s.6 (1).

Important  

Articles
John Lambert The Trade Marks Act 1994
John Lambert The Trade Marks Rules 2000
3 May 2000

John Lambert Community Trade Marks
9 April 2003