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. This is our latest article of trademarks and if you want to read an explanation of what a trademark is please follow this link…..
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.
On what grounds can my
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 goods;
- 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.
As we will see in our next article the top three bullet points are identical to the tests in infringement