Absolute grounds for refusal of a trade mark registration
Written by Rehana Ali on 14 January 2014« Return to Reading Room
Planning on registering a trade mark? The following article provides you with an insight on what you must avoid to give your mark a better chance at successful registration.
According to section 3(1) of the Trade Marks Act 1994, the following are not capable of registration:
Marks that lack distinctiveness
An example of this may be illustrated by the attempted registration of the word mark ‘Companyline’ as a CTM for insurance services back in 2000. OHIM (the body responsible for trade mark registrations in the EU) refused registration based on the following grounds:
- The mark was devoid of distinctive character.
- The two words ‘company’ and ‘line’ were generic.
- The fact that the word ‘companyline’ was a made up word was irrelevant.
Marks that are descriptive of the goods or services attached to them
Marks that consist exclusively of signs or indications that describe:
- The kind.
- The quality.
- The intended purpose.
- The value.
- The geographical origin.
- The time of production of goods or the rendering of services.
- Any other characteristics of goods or services.
Examples may include mini cakes, 24 hour service, crispy chips, crunchy bar, smooth chocolate etc. The purpose of this rule is that descriptive signs must be freely available and not reserved for use by a single organisation. It must be noted however that if a descriptive element is used in combination with more distinctive features this may overcome the prohibition. The prohibition may also be overcome if a mark has acquired distinctiveness due to long term use.
The above provides an insight on two of the major areas to avoid, it must also be borne in mind that there are further legislative hurdles to overcome and there may even be a registered trade mark that will conflict with your proposed mark.
Lawdit are trade mark specialists that have successfully registered marks for over 10 years. Need help determining whether your mark is capable of registration? Contact us!
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