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Before you file a trade mark application - check the absolute grounds for refusal


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20 August 2012

Before you file a trade mark application: check the absolute grounds for refusal

Before you file your trade mark application in the United Kingdom it is sensible to assess whether your proposed trade mark complies with the Absolute Grounds for refusal of registration. When you file your trade mark application it will be assessed by a trade marks Examiner. The Examiner checks the mark, in particular, against the absolute grounds. If the Examiner is of the view that your mark falls within the absolute grounds then the Examiner will raise an objection giving you a deadline of two months within which to respond. Failure to respond to an Examiner may result in the refusal of your mark. There are no refunds on the application fees either.

The absolute grounds are set out in section 3 of the Trade Marks Act 1994 (the Act) which derives from article 4 of the Trade Marks Directive. I have set out the most common of the absolute grounds in section 3(1)(a)-(d) of the Act below.

The mark must comply with the requirements of a trade mark

This means that your mark must be capable of (1) being represented graphically; (2) distinguishing the goods and or services of one undertaking from those of others. This ground is the basic requirement that a trade mark must have. That is, a trade mark must be distinctive (whether inherent or acquired) so that it performs the essential function of distinguishing its goods or services from other undertakings.

The mark must not be devoid of distinctive character

This rule is assessed (1) by reference to the goods or services for which protection is sought; and then (2) by reference to the perception of them by the average consumer of those goods/services. An example would be APPLE filed in relation to fruit. Such an application will be refused as it is devoid of distinctive character because it would not function to distinguish the goods or services from those of others.

The mark must not be descriptive of the goods or services

The test here is whether the mark is capable of being viewed as consisting exclusively of a sign that designates a characteristic of the goods/services for which protection is sought. Therefore the APPLE example above would also be caught by this provision.

Trade marks must not be generic/customary in the trade

Signs that are customary in the current language or in the bona fide established practices of the trade will be rejected. So the APPLE example above will also be caught by this ground as traders will legitimately be using the word APPLE to describe apples.


The above is only an outline of the main absolute grounds which might cause a problem for trade mark applications in the UK. It is important to assess before filing the application whether the absolute grounds will bite your trade mark application.

Paul Bicknell, trainee solicitor. Email:  Tel: 023 8023 5979

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 2012-10-03 09:00:00 in Legal Articles

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