Absolute grounds for refusal

Absolute grounds for refusal

Absolute grounds for refusal

A mark will not be registered:

  • Unless it has a distinctive character (for example, it is not possible to register the mark 'banana' for bananas)
  • Where the mark consists exclusively of signs or indications which simply designate the kind, quality, intended purpose, value, geographical origin, time of production (of goods), time of rendering (of services) or other characteristic of the goods or services
  • Where the mark consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade

In relation to these first three grounds for refusal there is, however, an exception that will still allow the mark to be registered if it can be shown that before the date of application for registration and following the use which has been made of it, that the mark has already acquired a distinctive character.

Requirement for distinctiveness

Distinctiveness has to be assessed by reference to the goods and services listed in the application, and to the way in which the relevant public perceives the sign. While distinctiveness and descriptiveness are separate considerations which require separate assessment, it is likely to be the case that the more a mark describes the goods or services and needs to be used by other traders in any way to describe their goods or services, the less likely the mark is to be considered distinctive.

The ideal choice, e.g., for a word mark is one which has no connection with the product or service (e.g., MARS for confectionery) or invented words (such as OPODO for travel-related services).

Designs and logos also make good trade marks and have an advantage over word marks in the global market, as they transcend linguistic boundaries. Trade marks consisting of the get-up or 'trade dress' of products can also be registered: for example, the appearance of a pharmaceutical capsule covered half in red and half in black.

Sometimes a word mark with a low level of distinctiveness will be accepted for registration because added figurative elements (such as a border or a device) tip it over the borderline into being registrable. Any owner of a mark of this kind should be careful not to try to enforce it in relation to third parties' use of identical or similar words, unless that use also involves the same, or a similar, visual representation.

There are no special rules for assessing the distinctive character of signs consisting of surnames. As is the case for other types of mark, their distinctiveness has to be assessed in the context of the average consumer's perception of the goods or services for which registration is sought. However, the perception of the average consumer is not necessarily the same for all categories of signs; it may well be harder to establish that surnames are distinctive than to establish the distinctiveness of another type of trade mark.

The mark will be non-distinctive if, at the date of the application, the relevant public would have expected there to be numerous undertakings in the relevant sector under the name in question and, consequently, no expectation that relevant goods or services under that name would originate from any particular business.

Most cases concerning the registration of shapes of goods turn on whether the shape has distinctive character. This is because the public is not accustomed to perceiving shapes as indicators of the commercial origin of goods. Although consumers are aware of a variety of shapes in which a product may be supplied, in practice it is often difficult to show that such shapes might be perceived by the public as an indication of origin. Consequently, many applications to register shapes as trade marks fail.

The more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character. This means that, in practice, only marks which depart significantly from the norm or custom of the sector are deemed capable of designating origin.

The position on the registration of the shape of packaging is the same as that for shapes: the distinctive character of a trade mark must be assessed with regard both to the goods or services which are the subject of the application, and to the perception of the average consumer. This perception is not the same for a three-dimensional package trade mark as for a word or a figurative mark. This is because the average consumer is not used to deducing the origin of a product from its shape, in the absence of any graphical or textual element, so it can prove more difficult to establish distinctive character in the case of three-dimensional marks than in the case of word or figurative marks. Consequently, in order to be distinctive, a trade mark of this kind must depart significantly from the norms or customs of the sector.

A single colour or colour combination in the abstract may be registered as a trade mark. Such marks are not, in principle, subject to any stricter a test of distinctiveness than would be applied to any other type of mark. However, as is the case for shapes, it will often be harder to prove that a colour is distinctive since the public is not generally accustomed to associating the colour of goods with their commercial origin.

In practice, colours are more likely to be acceptable for registration on the basis of acquired distinctiveness (see immediately below).

In respect of internet domain names, the suffix of the name (such as .com or .co.uk) is usually ignored when assessing whether the sign has distinctive character.

Acquired distinctiveness

As stated above, certain objections on absolute grounds may be overcome by showing evidence of distinctiveness acquired through use. If the applicant can show that, prior to the date of their application, the mark has in fact become distinctive of their goods or services, the mark may be accepted. Since 1 January 2021, the EUIPO no longer takes into account use in the UK when determining whether an EUTM has acquired distinctiveness.

Distinctiveness acquired between the date of the application and the date when the registration authority examines the application does not count.

In respect of an EUTM that has little inherent distinctiveness, the applicant must show that distinctiveness has been acquired throughout the EU. Similarly, use in a limited part of the UK is not enough to make a UK mark distinctive enough to register, even if the applicant expressly seeks to limit its rights to the relevant area. The only exception to this rule is where the language of a word mark is spoken and understood only in the limited area (e.g. an application to register a Welsh word mark in relation to Wales might succeed on the basis of acquired distinctiveness within Wales).

In order to show acquired distinctiveness, the applicant must show that the relevant public perceives the mark as exclusively designating origin.

What this means is that:

  • Recognition and association of the mark with the applicant's goods is not sufficient to establish acquired distinctiveness. Such recognition or association does not amount to distinctiveness if the public do not regard the shape alone as a badge of origin for the products, but simply regard the shape as a characteristic of products of that kind or find it brings to mind the product and brand name with which they have become familiar.
  • It is legitimate for a tribunal, when assessing whether the applicant has proved that a significant proportion of the relevant class of persons perceive the relevant goods or services as originating from a particular undertaking because of the sign in question, to consider whether such person would rely upon the sign as denoting the origin of the goods or services if it were used on its own. If in any case it is shown that consumers have come to rely upon the mark as an indication of origin then this would establish that the mark had acquired distinctiveness.
  • However, where a mark has been used in conjunction with another registered trade mark so that it is difficult to establish reliance, it does not need to be shown that the public has actually come to rely on the mark in the course of their transactional behaviour. It is sufficient to establish that consumers have come to perceive the product designated by the mark as originating from a particular undertaking.

Further absolute grounds of refusal are:

  • If the mark cannot be represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its owner
  • If the mark is contrary to public policy or accepted morals
  • If the mark is deceptive
  • If the use of the mark is prohibited under UK law
  • If the mark is a specially protected emblem
  • If the mark consists exclusively of a shape or characteristic which results from the nature of the goods, or which is necessary to obtain a technical effect or which gives substantial value to the goods

Also, protected geographical indications (PGIs) and protected designations of origin (PDOs) cannot be registered as trade marks. These are names of agricultural products, foods, wines and spirits for which an intrinsic link exists between product or foodstuff characteristics and geographical origin. In the UK, e.g., 'Cornish pasty' is a registered PGI and 'Stilton Blue' cheese is a registered PDO.

Since 1 January 2021, a UK trade mark application will be refused where it conflicts with a PGI that is in force anywhere in the UK, either within Northern Ireland or Great Britain (England, Scotland and Wales). EU PGIs registered under the EU system will apply in Northern Ireland by virtue of the Northern Ireland protocol to the UK-EU withdrawal agreement, while UK PGIs (registered under a new system following the end of the Brexit transition period) will apply in Great Britain.

However, applicants will have the ability to overcome the refusal if they have no intention of operating within the geographical location where the PGI is in force. To do so, applicants can voluntarily limit the territorial scope of the rights conferred by their trade mark, for example, to exclude trade mark coverage in Northern Ireland or Great Britain. Where a trade mark conflicts with a PGI that is in force across the whole of the UK (registered in NI through the EU scheme and in GB through the UK scheme) a territorial limitation will not overcome the objection.

Sufficient representation of marks

To be acceptable for registration as a trade mark, a sign must be capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its owner.

Before 14 January 2019, in the UK, it used to be the case that, when filing your application, you were required to provide a graphic (visual) representation of your trade mark. Now, you can apply online and present your mark in a wider range of electronic formats, but you still need to ensure that your mark is presented clearly and precisely so that others can understand what it is.

The representation of the mark can be filed using one of the following formats:

  • Shapes: OBJ, STL and X3D
  • Figurative, pattern, colour: JPEG
  • Sound: MP3
  • Motion, multi-media and hologram: MP4

The file should be no more than 20 MB in total, per application. This could mean 20 MB for the representation of a single mark, or if you wish to apply for a series of 4 marks, that would mean 5 MB per mark. In the case of an application for a trade mark that relates to sound, moving images, hologram or a multimedia trade mark, the MP3 file cannot exceed 2 MB and the MP4 may not exceed 8000 kilobytes per second.

Note that if you wish to use a UK application as the basis for an international application, you will have to file your UK application in the traditional manner, with the mark shown graphically. You will not be able to use a UK application with a mark presented in a non-traditional electronic format as the basis for an international application, as the WIPO does not currently accept marks presented in electronic formats.

Limitations on registering shape or other characteristics of goods or packaging

A sign shall not be registered as a trade mark if it consists exclusively of any of the following:

  • The shape or another characteristic which results from the nature of the goods themselves
  • The shape or another characteristic of goods which is necessary to obtain a technical result
  • The shape or another characteristic which gives substantial value to the goods

This prohibition used to apply only to the shape of the goods; it now applies to any characteristic that is intrinsic to the goods applied for (such as a repetitive high-pitched sound in relation to a fire alarm).

Shape or other characteristic resulting from nature of goods

This refers to essential characteristics or innate qualities of the goods (such as the shape of a banana) related to their function (but not limited to shapes or characteristics that are indispensable to the function of the goods). This ground for refusal is not applicable if a decorative or imaginative element, one that is not inherent in the generic function of the goods, plays an important or essential role in the shape or characteristic.

Shape or other characteristic necessary to achieve technical result

A shape or other characteristic of goods which is necessary to obtain a technical result will be refused registration even if the technical result it achieves could be achieved by other shapes or characteristics using the same or another technical solution. The addition of non-essential characteristics having no technical function does not prevent a shape or characteristic from being caught by the absolute ground of refusal as long as all the essential characteristics perform such a function.

Shape or other characteristic giving substantial value to goods

The purpose of this provision is to exclude aesthetically appealing shapes from the scope of the trade mark regime, so this ground of refusal will apply where there is a significant design element.

A UK mark can also be refused if the application is made in bad faith. This is not a ground of refusal for EUTMs (although it is a ground for invalidity). There is no definition of 'bad faith'. Whether an application is made in bad faith has to be determined based on the circumstances of the particular case. Often, this ground arises if it can be shown that the applicant has no intention to use the mark as a trade mark, or if the application is a spoiling mechanism aimed at preventing someone else's registration or use of the mark.

Some typical examples are where:

  • A distributor applies for the mark in his own name
  • The applicant has clearly copied another's well-known unregistered mark
  • There is no bona fide intention to use the mark, for example, an antiques dealer including in his specification 'beer' and providing no evidence of any connection with brewing when challenged
  • An application is made for a mark for a range of goods 'confectionary, chocolate, biscuits, cakes etc.' whereas the intention was only to use for a particular lollipop. This bad faith case was strengthened by evidence that the applicant knew the opponent planned to use the mark.

While the registering body will look at all circumstances of any particular case, it has been suggested that bad faith 'plainly includes dishonesty and ... also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined.'

Essentially, the registering body will ask itself two questions:

  • Would the conduct of the applicant be judged as being in bad faith from an objective standpoint?
  • Was the applicant aware that its conduct fell below the proper standards of commercial behaviour?

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