Trade marks – Absolute Grounds for Refusal

The Law Regarding Refusal of a Trade Mark

The absolute grounds for refusal of a trade mark are given under Section 3 of the Trade Marks Act 1994. They consist of a set of situations under which the intellectual property office may refuse to grant the trademark or may later invalidate the trade mark. This means that even if a trade mark is originally granted it may later loose its trade mark status if, for example, the trade mark is not recognised by the relevant section of the market.

The main situations given under Article 3 which constitute the absolute grounds for refusal are:

  • The mark itself does not meet the requirements for the definition of a trade mark
  • The mark is devoid of distinctive character
  • The mark is made solely of signs or symbols which describe qualities or features of the goods or services to which they are to be associated
  • The mark consists solely of words which are in common usage
  • The mark consists of a shape that is required by the product itself
  • The mark is contrary to public policy or morality

‘Definition of a trade mark’

The definition of a trade mark is given under Article 1 of the Trade Marks Act 1994. Generally this means the mark must be capable of being represented graphically. This does not preclude the possibility of the mark being a smell, sound or colour as long as it can be graphically represented. For a sound, for example, a musical stave and notation may suffice for the mark to fall under the definition of a trade mark.

‘Devoid of distinctive character’

A trade mark must be capable of distinguishing the goods or services of one undertaking from those of any other undertaking. This means the customer should be able to look at two similar products and tell that they are different by the trade mark. When judging whether or not the trade mark is capable of distinguishing goods, the goods themselves must be taken into account. The trade mark should be assessed when looking at the expectations of the reasonably well informed, observant and circumspect consumer in the market of the goods in question. For example, if a market is limited to 100,000 people it is their expectations of the mark that will be used to judge whether or not the mark can distinguish goods and not the expectations of the wider population.

Distinctiveness may also be acquired through use. If a mark is not seen as distinctive at its conception, its use within the specific market in relation to the appropriate goods could make the mark distinctive. The mark would have to become distinction in relation to the reasonably well informed, observant and circumspect consumer given above. This could possibly be expensive as it will need to be shown that the mark was widely used and therefore recognised and this may require some expensive advertising.

‘Descriptiveness’

The specific qualities that are not allowed solely to constitute a mark are kind, quality, intended purpose, value, geographic origin and time of manufacture of the good or rendering of the service. There is also a caveat to include any other characteristics of the goods or services. Basically a word or picture that shows any quality or feature of the goods being marketed under it is not capable of being a trade mark on its own. It can, however, be incorporated into a trademark that has another dominant feature.

It should also be noted that made up words that have certain connotations within the target market may also be refused.

‘Common usage’

A word in common usage includes signs or indications which have become customary in the current language or in the bona fide and established practices of the trade. This means that trademarks will not be granted for words, signs or symbols that everybody in the relevant market knows and already associates with something.

‘Shape’

As a trade mark may theoretically consist of any sign that is capable of being graphically represented, it therefore follows that it would be possible to trademark a shape. There is a problem here in that the protection of shapes that are required for a product to work should be the preserve of patent protection or design right protection. A trade mark should not be capable of being used to gain additional protection in these areas. An example in this area is the Dyson Vacuum Cleaner (C-321/03 Dyson Ltd v. Registrar of Trade Marks). In this case Dyson tried to get a trade mark for an integral part of one of their designs and had the application rejected because the shape could only come about from the shape of the product and it would have been unwarranted protection.

It can, however, be the shape of the packaging. A good example of this is the Coca-Cola bottle. This is allowed as it is a very recognisable shape which is different from other bottles and the shape could be changed and the drink could still be contained.

‘Public Policy or Morality’

This is held under section 3(3) (a) of the Trade Marks Act 1994 and is in line with European Law, specifically the Paris Convention which states that a mark should be refused if it is deemed to be ‘contrary to morality and public order’. This provision allows things such as swear words or offensive slogans, or indecent images to be refused. It also allows the prevention of marks that would incite anger in the public, an example being racist slogans.

Other protected emblems

There is also further provision to stop the use of certain protected emblems held under section 4 of the Trade Marks Act 1994. This protects national flags and official names, but also includes the emblems of certain national institutions and their names. This restriction extends to certain coats of arms and multinational organisations such as the United Nations Organization and the Olympic logo. This restriction is not absolute and can be bypassed if it can be shown that the organisation in question has granted permission for the use of its logo, sign or mark within the trademark that is being applied for.