Want to talk to an expert employment law solicitor?

You'll receive a callback from a specialist within an hour

In our previous post we looked at the “prima facie” registrability of trademarks and the practical benefits of registering a trade mark. In this post we’ll take a look at when a prima facie registrable trade mark can and may be refused registration on absolute grounds. In the next post in this series we’ll look at the relative grounds for refusal.

A mark can be refused registration under the Trade Mark Act 1994 if it meets any of the criteria for absolute refusal.  The absolute grounds for refusal are as follows:

The mark doesn’t meet the requirements to allow it to be prima facie registrable under s.1(1) Trade Mark Act 1994 (s.3(1)(a) TMA 1994)

If the mark does not possess the necessary characteristics to allow it to be prima facie registrable then this is obviously a barrier to its registration. This ground of refusal would apply, for example, if the mark couldn’t be described in written form and was therefore not capable of graphic representation.

The mark merely describes the characteristics of the goods (s.3(1)(b) TMA 1994)

If the mark simply consists of a description of the characteristics of the goods or services being sold then it will be refused registration.  There are three means through which a good can be refused registration on this ground:

  1. The mark is too descriptive: it simply consists of a name or a description of the quality or quantity of a good etc. An example of this would be the attempted registration of the mark “orange juice”
  2. The mark simply refers to geographical origin: marks such as this (i.e. “Richmond Bakers”) would be refused registration because the mark must be left available for other traders located there. In the aforementioned example other bakers in Richmond would be excluded from using the description of “Richmond Bakers” or possibly “Bakers in Richmond” if this exclusion did not apply. This is clearly not fair.
  3. The mark is simply a normal agglomeration of two words: for example, “headphones” would not be allowed as it is a normal agglomeration of two words. However, “headfones” may be allowed as it is a relatively unusual combination.

The mark has become customary in current language (s.3(1)(d) TMA 1994)

If the mark has become customary in current language then it will be refused registration. Words such as “laundrette” or “Muggle” (although the last word may already be a registered trade mark) would probably fall under this absolute ground for refusal.

It can be difficult to determine whether a word has become customary in a current language. A good (but possibly not absolute) means of checking is a quick Google search or a search in the dictionary.

The mark consists purely of the shape of goods or their packaging(s.3(2)(a) and (b) TMA 1994)

If the mark does not “immediately strike the eye as different and therefore memorable” then it will be refused registration under s.3(2)(a) TMA 1994. A basic example of a mark that would be refused on this ground would be the attempt to trade mark brown paper wrapping. However, it can often be difficult to draw the line as to where a shape or means of packaging is distinctive enough or not.

If the mark is the shape of a good which is simply necessary to achieve technical results (s.3(2)(b) TMA 1994)

If the mark of a good is simply the shape it is in and this shape is necessary to achieve a technical purpose then it will be refused. A good example of such a ground for refusal was the rejection of the attempted registration of a shaver head by Phillips. 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.

Public interest grounds

A mark can be contrary to the public interest (and therefore will be refused registration) if:

  1. It is contrary to public policy or morality (s.3(3)(a) TMA 1994)
  2. It is likely to deceive the public (s.3(3)(b) TMA 1994) regarding the nature, quality or origin of the goods
  3. The application for the trade mark is made in bad faith (s.3(6) TMA 1994)

Trade mark “trolls” may be refused registration of their mark under s.3(6) TMA 1994 as it is regarded as bad faith to register a trade mark to simply stockpile it for future use.

Overcoming the absolute grounds of refusal

The applicant can overcome the absolute ground of refusal of lack of disctinctiveness if it can show evidence of use and that sufficient reputation (“goodwill”) is invested in the product.

Want to talk to an expert employment law solicitor?

You'll receive a callback from a specialist within an hour

Share →

Leave a Reply

Your email address will not be published. Required fields are marked *

 

Our awards

Request a callback

Your name

Your email

Your telephone number

Contact us

Please feel free to discuss your own position and concerns. Contact your nearest office on:

T: 020 3397 3603
E: enquiries@redmans.co.uk
W: www.redmans.co.uk

Testimonials

4.73 Average

92 Reviews

Anonymous

Redmans Solicitors provided a professional and prompt service in dealing with my settlement agreement. They used their experience to negotiate a better deal for which I am grateful for. I highly recommend their services.

Posted 1 day ago

Cheryl R

Very efficient and friendly lawyers. I have used Redmans twice now and Chris Hadrill has been amazing to work with. Would highly recommend Redmans.

Posted 1 day ago

Anonymous

I found Redmans Solicitors to be extremely professional, dealing with my questions and concerns quickly and in detail. I would have no hesitation in recommending Redmans Solicitors to anyone.

Posted 1 day ago

Anonymous

I requested Redmans services on a redundancy case. Both Chris and Rana were great, thoughtful, very professional and responded quickly. They were very clear throughout the entire process, regarding the process and my options and I couldn't feel I had better legal advice for my case. Overall excellent service and I would certainly recommend and use their services again.

Posted 5 days ago

Anonymous

Responsive, patient, thorough and personable - an excellent service.

Posted 1 week ago

Anonymous

The team at Redmans, Chris Hadrill and Sacha Barrett were always very helpful and had expert knowledge to assist me during my employment law matter, I would not hesitate to recommend them to all!

Posted 1 week ago

Arun T

Chris was punctual, attentive and accurate. He answered my questions with clarity and avoided dubiosity. I would recommend him to anyone seeking legal advice within his remit.

Posted 1 week ago

Yulian Z

Great service

Posted 1 week ago

Anonymous

Excellent, professional service and a speedy resolution. Many thanks

Posted 1 week ago

Taral P

Sacha and Chris were both very helpful in closing out my matter. Sacha was very clear in helping me understanding the documents I needed reviewing, providing a professional service throughout.

Posted 1 week ago

Anonymous

Really pleased with the swift and professional service from Redmans. They provided very clear advice and helped conclude my matter with the minimum of stress or delay.

Posted 1 week ago

Matthew L

Redmans were very quick to respond to my initial enquiry, and provided me with a very effective and efficient service, generating a most satisfactory outcome. I would definitely use them again if the need arose.

Posted 1 week ago

Anonymous

First rate service. Warm and friendly whilst exceptionally efficient at the same time. I would highly recommend them.

Posted 1 week ago

Anonymous

Professional and helpful. Thorough and supportive.

Posted 1 week ago

Richard A

Excellent service, prompt replies, great advice

Posted 1 week ago

Anonymous

Very professional services

Posted 1 week ago

Margaret

Redmans Solicitors took a lot of the worry away and were very thoughtful and meticulous in their dealings with my case , thank you very mush , great service and a great job

Posted 1 month ago

Mark B

Prompt efficient service. Hourly, and part thereof, billing got a bit stressful at times - as opposed to flat fee - made me think twice about sending an email or making a quick call when I had a query because it would have eaten up minutes from my budget. But happy with the legal service I received overall and would recommend.

Posted 1 month ago

Anonymous

Chris Hadrill has provided a truly wonderful service and was willing to lend his support and expertise at a time when other solicitors, only wanted to discuss their fees! A clear thinking and down to earth professional, Chris can be trusted to listen carefully to your matter, cut through the fog, and advise you on the best (and most realistic) way forward, saving you time, money and heartache. It will be helpful if you first get your ducks in a row in terms of documents / evidence etc. and then contact Chris, (that’s what we did) as this will help your matter to be dealt with faster. The more organised and together you are the more successful you will be. You'll be fine with Chris, I highly recommend him. Good luck!

Posted 1 month ago

Richard v

Excellent Service

Posted 1 month ago

Anonymous

Very happy from service received. Highly recommend

Posted 1 month ago