Trade marks – Absolute Grounds for Refusal

The absolute grounds for refusal of a trade mark are outlined in s 3 of the Trade Marks Act 1994 (TMA 1994). It sets out when the Intellectual Property Office may refuse to grant or later invalidate a trade mark.

Under s 3, absolute grounds for refusal include:

  • 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;
  • the mark might deceive the public;
  • the application is made in bad faith.

Definition of a trade mark

The definition of a trade mark is given under s 1 of TMA 1994. Generally this means the mark must be capable of being represented graphically.

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 they are different by the trade mark. 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. Again, the mark would have to become distinctive to the reasonably well informed, observant and circumspect consumer.

Descriptiveness

A trademark will not be registered if it consists solely of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of 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. 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 trademarks will not be granted for words, signs or symbols that everybody in the relevant market knows and already associates with something.

Shape

A mark which consists purely of the shape of goods or their packaging will be refused. It will only be registered if it ‘immediately strikes the eye as different and therefore memorable’.
A mark will also be refused if it consists of the shape of goods and this shape is necessary to achieve a technical purpose. For example, the attempted registration of a shaver head by Phillips was rejected as it was deemed that the mark (the shaver head) was simply a representation of the shape of the good, which was itself necessary to achieve a technical result.
A sign will also not be registered as a trade mark if it consists exclusively of the shape which gives substantial value to the goods.

Shapes should generally be registered as design rights, although the Coca Cola Bottle was registrable 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

Under s 3(3) (a) of TMA 1994, a mark will 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.

Deceiving the public

Registration of a mark will be refused if it is of such a nature as to deceive the public (eg, as to the nature, quality or geographical origin of the goods or service).

Other protected emblems

Section 4 of TMA 1994 stop the use of certain protected emblems. This protects national flags and official names and 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 Organisation and the Olympic logo. This restriction is not absolute and can be bypassed if it can be shown the organisation in question has granted permission for the use of its logo, sign or mark within the trademark that is being applied for.

Bad faith

Trade mark ‘trolls’ who try to register a trade mark in bad faith to just stockpile it for future use may be refused registration of their mark under s 3(6) TMA 1994.