A trade mark is a valuable commodity for any business, although not every trade mark will be accepted. Once a trade mark application has been made, it will go into the stage known as examination, where the examiner will determine whether the trade mark meets the legal requirements. If the trade mark doesn’t, they may refuse the trade mark either by absolute grounds, or via relative grounds .
Section 3 of the trade marks act lays out all the reason a trade mark would be absolute rejected by the examiner. The first way the trade mark would be refused is if it doesn’t meet the statutory definition of a trade mark;
1)In this Act “trade mark” means any sign which is capable—
(a)of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
(b)of distinguishing goods or services of one undertaking from those of other undertakings.
For most trade marks registered, that are consisted of words or images, this shall not be a problem, however if looking to registered non-traditional trade marks such as smells, or shapes, great care must be made to meet this definition.
The second way a trade mark would be rejected is if it is devoid of any distinctive characteristic. One of our team members will be able to work with you to determine if your mark is distinctive, and although it is different on a case-by-case basis, you can usually judge whether a mark isn’t distinctive if;
- Its descriptive of the product or service you provide.
- Someone else is using a similar mark
- Uses too many adjectives to describe the product or service
A trade mark can acquire distinctiveness however overtime, if enough people recognise that trademark, so whereas “Bank of America” would be deemed very descriptive, over time it has quired enough distinctiveness to be accepted.
Following on from the mark being distinctive, section 3 also refuses any mark which has indicators as to characteristics of the product/services, quality, quantity, geographical indicators and more. So for example, the following trade marks would be refused; “Birmingham Boots” “Best toys” “Full Cotton T-Shirts”
Finally, a trade mark which uses signs or indications which are customary in the field will be refused. This means that although the word “Hoover” is distinctive, the fact that many people would call a vacuum cleaner a hoover means that the trade mark would be refused.
Relative Grounds for Refusal
A trade mark examiner will conduct a search to see whether there are any similar or identical trade marks already registered in the same classification of goods or services. If they feel the trade mark is similar, and in similar goods and likely to cause the public confusion, they will write to the existing trade mark holder to let them know of your intention to register, and from then on they may potentially object to your trade mark.
BKIP offers all clients a free search service to let you know if we think your trade mark will be refused, as well as searching the register to see if there are any similar trade marks already registered, who may object to your mark. To enjoy this free service, contact a member of our team today at email@example.com