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

4.67 Average

66 Reviews

Anonymous

As with All solicitors advice without consequence but understood and communicated my legal position

Posted 6 days ago

Anonymous

Prompt, professional and excellent service.

Posted 1 week ago

Dominic C

Excellent service, prompt and helpful

Posted 2 weeks ago

Anonymous

I found Redman’s to be very efficient and got me the best deal available in the short time scale that was available.

Posted 2 weeks ago

Victor L

Very professional. Provided excellent advice on my Settlement agreement.

Posted 2 weeks ago

Anonymous

Professional from start to finish.

Posted 2 weeks ago

Oliver W

Excellent service provided by Redmans, will certainly consider using again.

Posted 2 weeks ago

Melanie H

Very professional and extremely personable service. Thank you very much.

Posted 4 weeks ago

Anonymous

I found Chris to be very approachable and easy to speak with about complex matters. He took action quickly and his updates to me, as his client, were prompt. I would recommend Chris and the team at Redmans without hesitation.

Posted 4 weeks ago

Anonymous

Good advice

Posted 4 weeks ago

Anonymous

Overall happy with the service provided by Chris and Rana.

Posted 4 weeks ago

Anonymous

Chris and Rana provide a great service, very informed, diligent and care about your result, would recommend Redmans

Posted 4 weeks ago

David W

A speedy efficient friendly service, I would definitely recommend Redmans Solicitors for processing Settlement Agreements.

Posted 4 weeks ago

Anonymous

Both Rana and Chris were fantastic. From the first phone call I was confident my matter was in good hands. I was not disappointed. I would highly recommend Redmans. Thank you again for all of your support and advice.

Posted 1 month ago

Federico S

Great advices and communication. Through Redmana I obtained match more than what I thought. Highly recommended

Posted 1 month ago

Tom G

A good and efficient service with the required legal advice provided for a settlement agreement.

Posted 1 month ago

Francis T

The solicitor I used was Chris Hadrill, who I found extremely professional and I felt that he made me feel at ease, considering the subject matter he was assisting me with.

Posted 1 month ago

Anonymous

Chris provided excellent assistance with the negotiation of my settlement agreement. From start to finish, I was consitently updated and advised on the best course of action to take. I would highly recommend Chris and Redmans Solicitors.

Posted 1 month ago

Anonymous

They are busy people but manage well so generally I would recommend them.

Posted 1 month ago

Anonymous

Very efficient and professional service from my first phone call making an enquiry. Timescales of the matter in hand were met and within the agreed budget. Would highly recommend Redmans

Posted 1 month ago

Lisa B

Really very good service, always available to answer questions, provide my with any information I needed to make informed decisions.

Posted 1 month ago