Absolute Grounds for Refusal - Trade Mark Law
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6 August 2009
A trade mark under section 1(1) of the Trade Marks Act 1994 may
be 'any sign capable of being represented graphically, which is also capable of
distinguishing goods or services of one undertaking from those of other
undertakings'. Ultimately, it can be recognised as a sign that differentiates
your goods or service from someone else's.
Registration of a trade mark gives you the exclusive right to
continue use of your trade mark and allows action to be taken against third
parties for infringement of the trade mark rights thereby afforded. Without a
registration of the trade mark it might prove difficult, particularly in
relation to the uncertainty that surrounds the action of passing off, to prevent
unauthorised third party use and certainly, by not registering a trade mark, it
might be open to a third party to apply to register a similar or identical mark
in respect of similar or identical goods - provided that a challenge by a person
claiming to have an earlier unregistered right in that name is unsuccessful
under sections 5(4)(a) and or (b) of the Trade Mark Act 1994 (one of the
relative grounds for refusal).
Whilst the law provides a broad definition of what a trade mark
can consist of, a trade mark cannot use words which describe a quality or
characteristic of the good and subsequently there are several grounds on which
registration may be refused.
Under section 3 of the Trade Marks Act 1994 trade mark
applications may be refused on various different grounds:
(a) Signs which do not satisfy the requirements of section 1(1),
(b) where the mark is devoid of any distinctive character, (c) 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 production of goods or of rendering of services, or other
characteristics of goods or services, (d) where marks that 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.
However, it must be stressed that it may be possible for marks
that would otherwise be non-distinctive or descriptive to become registrable
after sufficient use has been made of the trade mark. The lack of
distinctiveness in section 3 (1) (b) to (d) can be largely overcome by the
proviso that distinctiveness has been acquired by an extensive use of the trade
mark, and thus if the claimant can show that he has built up a good reputation
by using the mark, it could be said that it has acquired distinctiveness through
its use and therefore it can be registered.
Conversely, one must highlight that if the sign fails the
section 1 (1) requirement that the mark can be graphically represented; no
amount of use can get over that hurdle that exists and therefore the sign will
Additionally, Section 3(2) states situations where the shape of
a trade mark prevents it from being registered and therefore you cannot register
a trade mark if it results exclusively from the nature of the goods; for example
you cannot register the shape of a football. This includes section 3(2) (a), the
shape that results from the nature of the goods themselves; section 3(2) (b),
the shape necessary to obtain a technical result, or section 3(2) (c), a shape
which gives substantial value to the goods.
In addition under section 3(3), trade marks will not be
registerable if they are contrary to public policy or to accepted principles of
morality or if it is deceptive. Furthermore, under subsection 4, marks shall 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.
And finally under subsection 6, a trade mark shall not be
registered if or to the extent that the application is made in bad faith, where
for example registration was refused on the basis the applicant knew the mark
applied for belonged to somebody else.
Essentially, many of the absolute grounds for refusal exist to
protect the public from traders obtaining rights in signs that should be free
for everyone to use and therefore whilst one would not expect to be able to
obtain an absolute monopoly in the word 'T-shirts' for clothes, for example, it
is possible to have a descriptive mark such as a geographical name which has
become distinctive through extensive use as long as it is not used by another
company for that type of goods or services.
By Hollie Jones assistant to Jody Tsigarides (firstname.lastname@example.org
Jody is a Solicitor who specialises in IP and Media law with a particular focus
on trade marks
About the Author
Lawdit Solicitors offer services and
advice for litigation, commercial contracts, Intellectual Property and IT legal
agreements. We are experts in commercial law with a heavy emphasis on
Intellectual Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of Higher Court
Advocates and we are the appointed Solicitors to the largest webdesign
association in the world, the United Kingdom Website Designers Association.
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Article Published/Sorted/Amended on Scopulus 2009-08-13 00:33:47 in Legal Articles