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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 remain un-registrable.

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 ( 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

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