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Relative grounds for refusal

Relative grounds for refusal

Contents

Relative grounds for refusal

The registering body may refuse registration if the mark:

  • Is identical to an earlier trade mark and the application is in respect of identical goods or services
  • Is identical to an earlier trade mark and the application is in respect of similar goods or services and there is a likelihood of confusion with the earlier trade mark
  • Is similar to an earlier trade mark and the application is in respect of identical goods or services and there is a likelihood of confusion with the earlier trade mark
  • Is similar to an earlier trade mark and the application is in respect of similar goods or services and there is a likelihood of confusion with the earlier trade mark
  • Is identical or similar to an earlier trade mark where the earlier trade mark has established a reputation in the UK (or, where the earlier trade mark is an EUTM, in the EU) and the use of the latter mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark

Where grounds for refusal of an application for registration of a trade mark exist in respect of only some of the goods or services in respect of which the trade mark is applied for, the application is to be refused in relation to those goods and services only.

The registering body may also refuse registration if a third party owns an earlier right that takes priority; i.e. where the use of the applicant's mark 'is liable to be prevented by any rule of national or EU law (in particular, passing off) or by virtue of another earlier right (in particular, copyright, design right or registered designs)'. For an EUTM, the earlier right must be 'a non-registered trade mark or another sign used in the course of trade of more than mere local significance'.

For the purpose of establishing that the prior sign relied on has been used in the course of trade and is of more than local significance:

  • Use requires use of the earlier right in a commercial activity with a view to economic advantage and not as a private matter.
  • The sign must be used as a distinctive element in that it serves to identify an economic activity engaged in by its owner.
  • The sign must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, meaning that where the territory in which the sign is protected is other than local, the sign must be used in a substantial part of that territory. In assessing this, account should be taken of the duration and intensity of the use of that sign as a distinctive element, in particular the use of the sign in advertising and commercial correspondence.

The owner of the earlier unregistered right only has to establish that they have a right under the law of the relevant member state to prohibit use of a subsequent trade mark; they are not required to establish that they have successfully relied on that right in order to prevent the use of that subsequent mark.

An application for registration of a trade mark may also be refused if an application for a designation of origin or a geographical indication has been submitted prior to the date of that application or the date of the priority claimed for that application, and the designation of origin or (as the case may be) geographical indication is subsequently registered.

Where an agent or representative of a trade mark owner applies for registration of the trade mark in their own name and without the owner's consent, the application will be refused unless the agent or representative can justify it.

Earlier trade mark

The term 'earlier trade mark' includes EUTMs, UK registered marks and international marks. It may also include a trade mark whose registration has expired at the time of the application, but which is later renewed or restored - therefore, if you wish to apply to register a trade mark, you should search for recently expired trade marks.

Similarity between marks

In order to determine whether two trade marks are similar, an overall assessment must be made of the visual, phonetic and conceptual similarities between the marks, based on the overall impression each of them gives, and bearing in mind their distinctive and dominant components. This must be judged from the point of view of the average consumer in the country or countries where the earlier mark is registered, who are deemed to be reasonably well-informed, observant and circumspect.

Strong differences in one or two aspects may counteract similarities. For example, strong conceptual differences may counteract visual and phonetic similarities or, conversely, strong phonetic or conceptual similarities may neutralise visual differences to render the marks similar.

Also, where two marks are phonetically similar, if they are not visually or conceptually similar they may not be considered similar for the purposes of trade mark law if they are used on goods which are marketed in such a way that, when making a purchase, the relevant public perceives the mark visually.

Where a complex mark has a component that is identical with or similar to another mark, it will not be deemed similar to that other mark unless the component in question dominates the overall impression that the mark creates. This only applies in cases involving complex marks that are dominated by one particular component to the exclusion of all other components. It is not relevant to trade marks that have no dominant component, nor to those that contain several components, each of which has a dominating effect.

Similarity between goods or services

When deciding whether goods or services are similar, issues such as the nature of the goods/services, their end users, their methods of use and whether they are in competition with one another or just complementary will be considered.

Any assessment of similarity will be made by reference to the 'relevant public' for the respective goods/services. For many types of goods/services this public will be consumers in general, but it may be a specialist subset of the public for goods/services that are directed at very narrow markets.

Goods and services are not to be regarded as similar or dissimilar on the ground that they do (or do not) appear in the same class under the International Classification.

Unfair advantage or detriment to earlier mark

A trade mark which is identical with or similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the UK, and the use of the later mark without due cause would take advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. There is a similar provision for EUTMs.

This ground applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.

If there is any similarity at all between the marks, the court must undertake an overall assessment of all factors relevant to the circumstances of the case to determine whether the similarity is sufficient for the relevant public to assume a link between the two, given factors such as the earlier mark's reputation. In particular, it is necessary to show a change in consumers' economic behaviour to establish detriment.

Consent of person holding earlier right or mark

Registration of a trade mark under one of the relative grounds for refusal will not occur where the owner of the earlier trade mark or other earlier right consents to the registration. There is no equivalent provision for EUTMs.

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