The trade mark registrability test: Consider this before you register (2/2)

As per section 3(1) of the Trade Marks Act 1994 (TMA), there is a requirement for distinctiveness of the mark, in order to enable registration. Disobedience of this absolute ground for refusal will not enhance the likelihood of your mark receiving registration. Ways of amplifying distinctiveness could include adding a figurative element to a word mark, for example.

An idea of what to avoid can be witnessed in the case of WM. Wrigley JR Company v Office for Harmonisation in The Intel Market [2003] ETMR 88, where the mark “Double Mint” was devoid of holding distinctive character. It is best to avoid descriptive terms, even if there is a use of compound wording.

However, if your mark is deemed to lack a sense of distinctiveness, section 3(2) TMA ensures that it shall not be refused registration if it has acquired such character through its use prior to registration. It is also worth noting that contrasting types of marks require different levels of distinctiveness, therefore it would be difficult to establish a template that fits all. So, to summarise, some features which you should carefully consider for your mark include clarity, precision, and distinctive character. If you are unsure whether your mark has satisfied those grounds, please do not hesitate to get in touch with a member of our solicitor team, who will be more than happy to assist you on these matters.

If you have any queries regarding the above article or would require assistance with an alternative matter, please do not hesitate to get in touch with a member of our expert solicitor team today.

Tel: 023 8023 5979


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