Trade marks – Relative Grounds for Refusal

The Law

The relative grounds for refusal of a trademark are given under Section 5 of the Trade marks Act 1994. Relative grounds for refusal occur when the mark that an undertaking applies for is already in use or a similar one is already in use. The law can be split into three sections: 

  1. Where the sign is identical to an earlier sign and the goods and/or services applied for are also identical.
  2. Where the sign is identical to an earlier sign and the goods and/or services applied for are similar.
  3. Where the sign is similar to an earlier sign and the goods and/or services applied for are identical or similar.

Earlier Sign

  • When judging relative grounds for refusal the comparison is made to earlier signs. As this is such an important concept it requires definition. The law in this area is held given by Section 6 of the Trade marks Act 1994. Legally the definition of an earlier mark consists of:
  • A trade mark that has been registered in the UK, whether it is a UK national trade mark or a community trade mark or an international trade mark that has the UK as a designated territory and has an earlier date of application for the trade mark.
  • A community trade mark or international trade mark which has a valid claim to seniority from an earlier UK national trade mark or international trade mark designating the UK. The seniority basically means that the later mark must be identical to the mark from which it claims priority, the advantage being that the date of application is officially from the earlier mark and not from the later mark claiming seniority.
  • The trade mark applied for is identical or similar to a previous well known mark, whether or not the well known mark is protected as a trade mark. The law in this case is given by Article 6bis of the Paris Convention for the Protection of Intellectual Property 

Identical signs for identical goods or services

  • The law in the UK for this is given under Section 5(1) of the Trade Marks Act 1994. The wording makes it clear that this provision is strictly for situations where the sign being used is identical and the goods or services that are being sold under the sign are also identical. The European Court of Justice holds that the test for identical signs requires that the sign reproduces all elements of the registered trade mark without any modification or addition. A caveat to this is that if the sign only contain insignificant differences (i.e. ones that would go unnoticed when the sign is viewed as a whole) it will still count as identical
  • After establishing whether or not the sign is identical to the trademark the goods and services will be assessed. If they are also identical to the goods or services which are sold under the registered trade mark then they will be caught by Section 5(1)

Identical signs for similar goods or services

  • If the goods or services are not identical but the sign is still identical to the trademark then Section 5(2)a of the Trade Marks Act 1994 may be relevant. This holds that if the goods or services are similar then there may still be grounds for refusal. When assessing the goods or services in question the category of goods is important as is the average consumer of those goods or services. Factors taken into consideration include: the nature of the goods or service; the consumers; how the goods or services are to be used and whether or not the goods or services compete with the ones sold under the registered trade mark. As a general rule if the goods or services are sold in the same market as those sold under the registered trade mark they will be considered for the similar goods.

Similar signs for identical or similar goods or services

  • As well as looking at similar goods or services for identical trade marks, Section 5(2) also considers the case of similar trade marks. Section 5(2)b of the Trade Marks Act 1994 states that a trade mark shall be refused registration if it is similar to an earlier trade mark and is to be use for similar goods or services. This provision requires that there be a likelihood of confusion in the consumers that will lead to a likelihood of association with the earlier mark. The requirement for likelihood of confusion makes this much more difficult prove and is therefore an area of trade mark law with more contentious cases.
  • In order to prove the likelihood of confusion, the European Court of Justice stated that the marks must be assessed globally (Sabel BV v. Puma AG (Case C-251/95), 1998 R.P.C. 199, 1998 E.T.M.R. 1 (1997)). This then evolved into the Global Appreciation Test. The global appreciation test states that there must be a similarity in how the trade marks look, how they sound (for example when a word is spoken aloud) or in their concept. The caveat is that this similarity must be judged based on the overall impression of the two marks taking into account, in particular, their distinctive and dominant features. The words “in particular” being included mean that a greater emphasis is placed on the dominant features of the trade mark but the more subtle features will also be taken into account.

Requirement for opposition

  • When assessing relative grounds for refusal the UK Intellectual Property Office will conduct a search of the already registered marks and inform their owners of the later mark that is trying to become registered. After the UKIPO has informed the relevant parties they will leave it to them to make an opposition to the registration. This means that the owners of the earlier trade marks are responsible for building a case against allowing the new mark to be registered and not the UKIPO. With a Community Trade Mark (i.e. one applied for at the European level) you have to specifically opt in for to be informed. In both cases the burden of the case falls on the owner of the earlier trade mark.