Why your trade mark application could be refused

When applying for a trade mark to be registered, there are many aspects of the mark that must be reviewed prior to it being approved, to ensure that it is original enough to exist within itself. 

A trade mark is defined as a sign which is capable for people to determine the clear and precise subject matter of the protection, and distinguishes the goods and services of one business from those of another business.

The initial, and most important checks are called the Absolute Grounds of Refusal, which can be found in section 3 within the Trade marks Act of 1994. The first of which is if the application does not suffice the definition above, if this is the case, the application will be immediately refused. 

An additional ground of absolute refusal is if the mark is devoid of distinctive character. This means that a customer should be able to look at two similar products and be able to tell which is which based solely on their trade marks. If confusion is likely to arise due to this, the application will be refused. Distinctiveness can also be acquired through use, where, due to its high profile, it would not be confused with a similar mark. Where this is the case, and the mark is well-known to this extent, then this may be permitted.

The mark must not be made up solely of signs or symbols which describe the qualities or features of the goods or services to which they are associated. This means that if the trade mark explicitly indicates the type of goods or services, of their intended purpose, value, geographical origin of the time of production, then this application is likely to be refused immediately under this ground. As well as this, made up words that have specific links within the target of which the application is aimed towards, may also be refused.

Another ground where the application would be immediately refused, exists where the mark consists solely of words which are in common usage. This equates to words, signs or symbols that someone in the applied-for market is aware of and previously associates with something else. This would also be immediately refused.

If, however, the trade mark is not refused due to any of these reasons, there still exists grounds called the Relative Grounds for Refusal. These are essentially the second stage of the application whereby, if any of these are satisfied, it does not automatically mean that the application will be refused, rather that they could be refused depending on the facts of the application. 

A mark must not be contrary to public policy or morality to be registered. This includes swear words, indecent images and/or shapes, and offensive slogans, and contains the aim to prevent anger in the public.

If a mark deceives the public, as to the nature, geographical origin, kind or quality of the goods or services, this will also likely be refused.

The application for a shape trade mark contains additional, and different, refusal grounds for this type of registration. Where the mark exists of a shape that consists purely of the shape and goods of their packaging, it will be immediately refused. Additionally, if it consists of the shape of goods and that the shape is necessary to achieve its technical purpose, this will also be refused. This is the same for shape applications that result from the nature of goods themselves, for example, if an application was attempting to register the shape of a hedgehog for a hedgehog toy, this would be refused, as the nature of the toy is the shape. Finally, if the shape on the application could be viewed to give substantial value to the goods, then this would be refused under these shape grounds as well. 

Shapes are not usually registered as trade marks, and are more often than not registered Design Rights. However, an exception to this is the Coca Cola bottle, as this was a recognisable shape which differs greatly from other bottles, so was therefore registerable as a trade mark.

There are additional grounds that are specific to emblems that must always be protected from trade mark registration. These include mark applications that contain the Royal arms, or anything that resembles them, a representation of the Royal crown, or any of the Royal flags, a representation of Her Majesty of any members of the Royal Family and any words, letters of devices that could have the influence on the public to suggest the mark or applicant has or recently has had a Royal patronage or authorisation.

If the mark suffices any of these grounds, it will likely be contested in its registration stage, and may face refusal entirely.

If you have any questions concerning the topics in this article, please don’t hesitate to get in contact with the team at Lawdit Solicitors today.

share this Article

Share on facebook
Share on twitter
Share on linkedin
Share on whatsapp
Share on email

Recent Articles

Nike v StockX, NFTs and Counterfeit products

American footwear and apparel company Nike has launched trademark infringement actions against the Detroit-based trainers and streetwear resale platform StockX, after allegedly using Nike’s Intellectual