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Addressing registration refusal for a trade mark

Written by Alex Baker on 07 August 2018

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As per the Trade Marks Act 1994, trade marks are, in particular, required to be capable of distinguishing the goods or services in question from other goods or services, are required to be distinctive, and cannot be confusingly similar to an earlier registered mark.

A mark being capable of distinguishing goods or services of one undertaking (trader) from goods or services of another undertaking is covered by ss. 3(1)(a) and 1(1) of the Trade Marks Act 1994, representing an absolute ground for refusal of registration. This is a vital aspect in securing a trade mark registration considering the fundamental role of a trade mark is to establish a connection between a proprietor and their product, or in other words provide consumers knowledge of the origin of a product. Indeed, without fulfilment of this provision it is not possible to satisfy any one of the following ss. 3(1)(b), (c), or (d), thus guaranteeing refusal of registration, as per the ruling of the European Court of Justice (ECJ) in C-299/99 Philips Electronics NV v Remington Consumer Products Ltd. [2003]. 

A mark needing to be of distinctive character is covered by s. 3(1)(b) of the Act, representing another absolute ground for refusal of registration. According to the case C-53/01 Linde [2003], in order to possess distinctive character a mark must “identify the product… as originating from a particular undertaking, and thus to distinguish that product from products of other undertakings”. The UKIPO Trade Marks Manual reiterates this, stating that “the question is whether the sign as a whole will identify the trade source of the goods or services to the average consumer of those types of goods or services.” Thus, as can be gathered from this, and indeed the case C-311/11 P, Wir Machen das Besondere einfach [2012], distinctiveness is assessed by reference to the goods or services for which the mark is associated, and the relevant public’s perception of that sign. However, in case T-34/00 Eurocool [2003] it was clarified that only “a minimum degree of distinctive character is sufficient”. Notably, being distinctive also means the mark itself cannot be exclusively descriptive of what the goods or services it is attached to are, unless, as according to the UKIPO Trade Marks Manual, the descriptive words are presented ‘unusually’ in such a way that it could subsequently be considered distinctive.

Lastly, the notion of being confusingly similar is covered by s. 5(2) of the Trade Marks Act 1994 as a relative ground for refusal of registration. This requires that an earlier mark exist which, when considered with the current mark, could lead to confusion in the mind of the average consumer, that being through the totality of conceptual, visual, and aural similarity of the marks in question. Reference here can be made to case C-120/04 Medion AG v Thomson multimedia Sales Germany and Austria GmbH [2006], whereby the ECJ ruled it was necessary to consider a mark as a whole in deciding similarity, but also appreciating that particular marks may be dominated in their overall impression by even a singular distinctive component of the mark.  

It is also important to remember that one cannot plead ignorance for a lack of knowledge regarding whether an earlier mark that could be similar exists. It is therefore vital to conduct a trade mark search before taking any actions with your new brand; that primarily being spending your capital on extensive branding, as you risk wasting such investment if it is found that your mark fails to satisfy the requirements of sound registration. Moreover is the increased risk that you can find yourself embroiled in court proceedings.

Fortunately, Lawdit Solicitors can assist in regards to any dispute issues relating to the points raised in this article, in both UK and US jurisdictions, so please call 02380235979 or alternatively email info@lawdit.co.uk for a free consultation that can help you on your way to making the right decision when it comes to protecting yourself and your brand.

If you'd like to know more about this article please send an email to Michael Coyle quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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