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:
- 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”
- 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.
- 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:
- It is contrary to public policy or morality (s.3(3)(a) TMA 1994)
- It is likely to deceive the public (s.3(3)(b) TMA 1994) regarding the nature, quality or origin of the goods
- 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.