The Registration Process

Contained within the UK Trade Mark Act and the EU Trade Mark Regulation are ‘absolute’ and ‘relative’ grounds for the refusal of a trade mark registration.

What are the ‘absolute’ grounds?

If devoid of any distinctive character, a mark can be refused registration on ‘absolute’ grounds. This is to say that the mark itself is largely descriptive of its designated product or is considered to be commonplace within its field of application, or within society in general.
Notably however, distinctiveness can be overcome if the mark is already recognised by consumers as a clear indicator of the origin of the product or services provided. This is known as the mark acquiring a ‘secondary’ meaning. For example, Coca Cola’s glass bottle, Cadburry’s shade of purple or Gucci’s green-red-green stripes, or common phrases like ‘Let’s get ready to rumble.’ and ‘I’m loving it’.

To keep the above exception within reasonable application the Act makes further provisions which are unburdened with considerations of trade mark reputation and distinctiveness. These include absolute refusals on the grounds of morality, public policy and likelihood of deception as to the nature of the goods or services in question. 

Trade marks applied for in bad faith will also be denied or annulled. ‘Bad faith’ often refers to ‘trade mark squatting’, the practice of individuals registering well-known marks in territories where the mark is not yet registered. Then when the trade mark owner decides to expand his business, the trade mark squatter, having registered the mark in anticipation, will be ready to sell it to them for an “agreeable” sum due to that registration rights are given on a ‘first-come, first-served’ basis. The UK and EU jurisdictions give businesses the opportunity to showcase bad faith registrations and take pre-emptive actions to bar such registrations. Yet not all nations take this approach, which makes the issue of ‘trade mark squatting’ very real for many big brands with a global presence.

‘Absolute’ grounds for refusal can also be issued for any characteristic of the product, in the form of a shape, colour, smell, sound, texture or material, that is functional in nature. The reason being, to avert the risk of a monopoly on the market. 

The protection of innovative functional features falls within the realm of patent law. A patent registrations will allow the innovator to exercise a monopoly over his creation for up to 20 years.

What are the ‘relative’ grounds?

‘Relative’ grounds for refusal are issued in consideration of trade marks that are already registered. To avert infringing on pre – existing rights, a mark can be opposed if it is identical or confusingly similar to a registered trade mark and its designated goods or services.

In the UK, an examiner will cite any similar or identical earlier marks in his report but will not raise objections. He will however notify the owners (UK IPO will notify only UK proprietors only) of the conflicting earlier marks of the new application. It will then be up to registered owners to raise opposition on the grounds that there is a likelihood of confusion, or a likelihood of association, between the marks. If they are successful in showing such likelihood, after arguments brought by both sides, the mark applied for will be refused registration.

Although likelihood of confusion is key to ‘relative’ grounds for refusal, UK and EU legislation provides additional protection for marks with reputation. A new mark will fail to register if it is perceived to be taking an unfair advantage from the reputation of another mark. 

This level of protection extends to unregistered rights such as those protected under the UK common law of passing off or other earlier intellectual property rights such as a design right in any of the aesthetic elements of a product and/or a copyright in a logo.

Also, the newly reformed EUTM Regulation, adds designations of origin and geographical indications to the list of ‘relative’ objections.

Revocation and Invalidation of a newly registered trade mark

Someone once said “a trade mark registration certificate is a sward not a shield”. If you don’t use it accordingly, you lose it. Two of the ways to lose it are by way of revocation or invalidation.

A registered trade mark that has passed the opposition process prior registration can be revoked post its registration. The grounds on which that can be done are if the mark is left unused, comes to appear as generic or can be shown that it can mislead the public through the way in which it has been put to use.

Invalidation on the other hand intends to correct misjudgement in the registration. If a mark is invalidated on its re-examination, where reconsidered will be those ‘absolute’ or ‘relative’ grounds above, the effect will be the same as if the mark was never registered to begin with.