Trade marks – Relative Grounds for Refusal

The relative grounds for refusal of a trade mark are listed in s 5 of the Trade Marks Act 1994 (TMA 1994). Relative grounds for refusal occurs when the mark that someone applies for is already in use or is similar to one already in use. An application will be refused if:

  • the marks and the goods/services are identical;
  • the marks are identical, the goods/services are similar and there is a likelihood of confusion/association;
  • the marks are similar, the goods/services are identical/similar and there is likelihood of confusion/association;
  • the marks are identical/similar, an earlier trade mark has a reputation and the applicant’s use would be unfair.

Earlier trade mark

When judging relative grounds for refusal, the comparison is made to earlier trade marks. Under s 6 of TMA 1994, an ‘earlier trade mark’ is defined as:

  • a registered trade mark, international trade mark (UK), EU trade mark, or international trade mark (EC) which has a date of application for registration earlier than that of the trade mark in question, taking account of the priorities claimed in respect of the trade marks;
  • an EU trade mark or international trade mark (EC) which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK) (where the owner of a trade mark registered in an EU member state has an application, or registration for an EU wide trade mark, for an identical mark and overlapping goods, they can claim ‘seniority’ in respect of the EU trade mark. This means they can backdate their EU trade mark rights to the date of their national registration, in that country);
  • a registered trade mark or international trade mark (UK) which has been converted from an EU trade mark or international trade mark (EC) which itself had a valid claim to seniority from an earlier trade mark, and accordingly has the same claim to seniority;
  • a trade mark which, at the date of application for registration of the trade mark in question or of the priority claimed in respect of the application, was entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark.

Identical signs for identical goods or services

Under s 5(1) of TMA 1994, a trade mark registration will be refused if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected. In Sadas SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs), the European Court of Justice held the test for identical signs requires that the sign reproduces all elements of the registered trade mark without any modification or addition. If the sign only contains insignificant differences (ie, ones that would go unnoticed when the sign is viewed as a whole) it will still count as identical.

If it is established that the sign is identical to the trademark the goods and services will then be assessed. If they are also identical to the goods or services which are sold under the registered trade mark, they will be caught by s 5(1) and trade mark registration will be refused.

Identical signs for similar goods/services; similar signs for identical/ similar goods/services

Under s 5(2), a trade mark registration will be refused if:

  • because it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or
  • it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

A likelihood of confusion arises if there is a risk the public might believe that the relevant goods or services come from the same undertaking or from an economically-linked undertaking. It is enough if only a part of the relevant public is confused.

In SABEL BV v Puma AG, Rudolf Dassler Sport, the European Court of Justice held that just because the two marks were conceptually similar was not by itself sufficient to decide there was likelihood of confusion. To determine whether there is a likelihood of confusion, all the relevant factors of the circumstances of the case must be considered, including a similarity in how the trade marks look, how they sound (for example, when a word is spoken aloud) or in their concept. An assessment of these factors must be based on the overall impression given by the marks bearing in mind their distinctive and dominant components.

Identical/similar to an earlier mark and unfair damage to reputation

Under s 5(3) of TMA 1994, registration may be refused if the mark might ‘dilute, blur or whittle away the repute and distinctiveness’ of a similar/ identical mark, will be of ‘detriment to the repute of the mark’ and would take ‘unfair advantage taken of the mark’s distinctive character or repute’. This applies even if the goods and services in question are not similar or identical (Intel Inc v CPM UK Ltd).