On What Grounds Can My Trademark Application Be Refused?

Unfortunately it is not uncommon for trademark applications to be refused. In this article we will explore how an application can be refused, which is the negative way of expressing the question how can I make a successful application? This article will explore the application criteria from the negative proposition as this is often the best way to understand a process. 

The examination stage

The Intellectual Property Office (IPO) has the remit of examining trademark applications in the UK. After an application has been filed the IPO will check whether any absolute or relative grounds exist for refusing registration. Absolute grounds are reasons which are inherent in the mark itself. Relative grounds relate to the existence of prior rights, whether registered as a trade mark or not.

Absolute grounds for refusal

An application may be refused because of some inherent defect in the mark such as:

· It is devoid of distinctive character;

· It is merely descriptive of the good or services
or some characteristic of them;

· It is generic;

· It cannot be represented graphically;

· It cannot be distinguished from the goods or
services of other undertakings.

Objections on the first three bullet points above can be overcome by showing acquired distinctiveness or a secondary meaning. However in respect of marks which are found to be merely descriptive the IPO will require several years’ use to meet the registration criteria. In relation to the last two bullet points above, an objection to the IPO’s refusal would be very difficult if not almost impossible to sustain.

Relative grounds for refusal

An application may be refused if there is a conflict between the mark and an earlier right. The following may be
relative grounds for refusal:

· Identical mark already registered for the same

· Identical or similar mark already registered for
similar or identical goods, and likelihood of confusion;

· Identical or similar mark already registered for
any goods, similar or not, where the earlier mark has a reputation, and the
later mark without due cause takes unfair advantage of or is otherwise
detrimental to reputation;

· Protection granted under common law, for example
copyright and design right.

We hope you found this article useful. If you wish to discuss this or any other legal issue than please do not hesitate to contact us using the details contained on this website. Written by Bruno Rodrigues.

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