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.

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For more information on:

  • ‘Descriptiveness’
  • ‘Common usage’
  • ‘Shape’
  • ‘Public Policy or Morality’
  • Other protected emblems