Trademark Examination Ipo Gov Uk

Trademark examination ipo gov uk

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Part A Introduction

1.

Foreword

This guide is compiled from judgements and decisions from a variety of sources including, in particular, the Court of Justice of the European Union (CJEU), the General Court (GC), UK Courts and the Appointed Persons. Registry practice reflects and interprets current law, but just as the law evolves, so practice must change to take new factorinto account.

Occasionally an application referred to as an example to illustrate a point suggests that the decision regarding acceptability was not in line with current practice.

Given the constantly changing significance of certain words, phrases or signs in general use, it may be decided in retrospect that a given mark should not have been accepted for registration. An expression of opinion relating to such marks is not intended to determine or affect the registrability of any mark or any rights arising under the Trade Marks Act.

It should be remembered that the practice stated in this guide should not be applied rigidly and without regard to the particular circumstances of the application.

Each case must be considered on its own merits. An examiner should not disregard practice but the particular circumstances of a case may suggest that a departure from practice would be justified. See for example the comments made by the Appointed Person (Simon Thorley QC) in the appeal by Henkel KGaA (BL 0/152/01) against the refusal of the Registrar to grant protection in respect of an International Registration.

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In that decision, at paragraph 12, it says -

It must always be remembered that the Registry Practice is a guideline and nothing more. It is helpful both to the Registry and to practitioners, but it cannot absolve the registrar’s hearing officers, or me on appeal, from approaching each case on its own facts.

Where there are good reasons to depart from usual practice officers may do so.

The reasons for departing from practice should be recorded on the application file either on the internal minute sheet or (if appropriate) in the Hearing Record.

2. Purpose of this guide

The purpose of this guide is to indicate to examiners the procedures to follow when examining a mark, and to give guidelines on registrability. Practice is determined by applying the judgements and decisions referred to above.

The guide will set down how particular categories of mark should be examined by applying this guidance. It will indicate when objections should or should not be raised and give guidance, where possible, on ways of overcoming the objections, including the filing of evidence.

3.

Practice, as determined by judgements and decisions of courts

The examination of marks for acceptability under the Trade Marks Act 1994 must be by reference to the provisions of that Act, taking account where appropriate of existing practice as laid down or endorsed by judgements and decisions in the Courts or tribunals referred to below.

Court of Justice of the European Union (CJEU).

These decisions are binding on the Office.

They are usually cases referred to the Court by EU member states for a ‘preliminary ruling’ on a point of law.

The case is then referred back to the national court for a final decision in accordance with the terms of the ECJ’s judgement. Alternatively, they are cases being appealed from the CFI.

(See below)

Advocate General’s Opinion

Before the CJEU gives its judgement, the Advocate General may deliver his/her opinion which may assist the Court in reaching its decision. The Opinion does not have binding effect but may give fuller reasoning on the issues being considered than the main Court needs to give in its final decision. GENERAL COURT (GC). These decisions are binding where the facts remain the same and are of persuasive value on cases where similar considerations apply.

The GC is used for appeals involving European institutions such as the UK IPO. There is the right of appeal from the GC decision to the CJEU. Either the GC or CJEU will give a final ruling.

UK Courts

These decisions are binding on the Office.

Appointed Person

These decisions are not binding on the Office on points of law other than in the case being dealt with. However they are of persuasive value in considering similar cases.

These decisions are published on the Office website under ‘Hearings (Results of past decisions)’. Appointed Persons are experienced Intellectual Property Law practitioners who are appointed by the Lord Chancellor. They are an appeals tribunal to the Office’s decisions.

There is no right of appeal to their decisions.

Practice amendment notices

Practice amendment notices(PANs). These are internal guidelines and notices changing or clarifying practice. The contents of a PAN are published on the Office website to notify practitioners and the public under ‘Practice Amendment Notices’

Decisions of the Tribunal/ Courts in other Member States

Decisions of other national tribunals/courts within the EU may be of persuasive value in determining the registrability of a particular trade mark.

This has been affirmed by the CJEU in Henkel KGaA v Deutsches Patent und Markenamt (C-218/01) where it was stated that:

The fact that an identical trade mark has been registered in one Member State for identical goods or services may be taken into consideration by the competent authority of another Member State among all the circumstances which that authority must take into account in assessing the distinctive character of a trade mark, but it is not decisive regarding the latter’s decision to grant or refuse registration of a trade mark.

On the other hand, the fact that a trade mark has been registered in a MemberState for certain goods or services can have no bearing on the examination by the competent trade mark registration authority of another Member State of the distinctive character of a similar trade mark application for registration of a similar mark for goods or services similar to those for which the first mark was registered.

The same must, in principle, be true of the position of the registrar with regard to decisions of law made in other EU tribunals & courts.

The Decisions of the CJEU on points of law are, of course, binding in the UK.

When an application for a trade mark is received by the Intellectual Property Office it will undergo an examination.

The examination will comply with Trade Marks Act 1994 and the Trade Marks Rules 2008. The purpose of these guidelines is to outline the specific process that an application will go through during examination and will act as a guide for examiners when assessing a mark.

These guidelines are divided into four sections, namely

  • the examination process
  • examination Practice
  • notification (Earlier rights)
  • overcoming objections

4.The Examination process

5.The Trade marks Act 1994

Examination covers what is known as ‘Absolute Grounds’ and ‘Relative Grounds’.

If a mark fails to satisfy the requirements under Absolute Grounds it may be refused by the Office. However, where earlier marks are drawn to the applicant’s attention under Relative Grounds this is not a reason for refusal.

This shall be covered in more detail further on in these guidelines. The following table outlines the sections of the Act which will be used by the examiner when conducting the examination and whilst the list of provisions for refusing a mark appears to be quite lengthy it should be borne in mind that the majority of applications received by the Registry are accepted for registration.

Section 1(1)Representation of the mark.
Section 3(1)(a)Signs which do not comply with the requirements.
Section 3(1)(b)Non distinctive marks.
Section 3(1)(c)Descriptive marks.
Section 3(1)(d)Signs which are customary in trade.
Section 3(2)‘Shape’ marks
Section 3(3)Offensive’ or ‘Deceptive’ marks.
Section 3(4)Marks whose use is prohibited in the UK by enactment or rule of law by any provision of community law.
Section 3(5)Marks specified or referred to in Section 4 below (Specially Protected).
Section 3(6)Applications made in ‘bad faith’.
Section 4Specially protected emblems’ such as Royal arms, Royal crowns, representations of the Royal family, UK and other flags, Coats of Arms, Olympic words and symbols.
Section 5Earlier rights.
Section 41(2)Series.

5.1 Section 3

The purpose of a trade mark is set out in Section 1(1) of the Act:

In this Act a “trade mark” means any sign capable 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, which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark is often described as being a “badge of origin”, its role, as the Act states, is to serve as an indicator to the customer of which provider the goods or services purchased have originated from.

There are a number of reasons why a trade mark may fail to signal, to the consumer, the origin of the goods or services and Section 3 of the Act lists a number of these.

Any objection raised under these grounds are considered to be an absolute grounds for refusal. A brief outline of the facets of Section 3 are given here.

5.2 Notional and fair use” and section 3(1)

The concept “Notional and fair use” refers to how a trade mark may be used in the marketplace and, consequently, will have a bearing on how distinctive the mark will be in its various modes of use.

This will include use on business papers, on packaging and in advertising i.e. not just on more conventional means for carrying brands, such as swing tags and sew-in labels etc. A mark may lose trade mark significance when encountered in a promotional context rather than physically used on the goods. Care must be taken when examining a mark which “reads” into the goods or services.

“Notional and fair use” of a mark registered in block capitals will also include use in differing typefaces and in upper and lower case letters.

5.3 Sections 1(1) and 3(1)(a)

Sections 1(1) and 3(1)(a) must be read together.

1(1) In this Act a “trade mark” means a sign capable of being presented in an appropriate form which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

3(1) The following shall not be registered-

(a) signs which do not satisfy the requirements of section 1(1).

These provisions require a mark to be presented in an appropriate form, using generally available technologies, namely submitted visually in a JPEG format or via a range of electronic formats such as MP3 and MP4.

The majority of trade mark applications contain words and/or images (also referred to as devices) which will obviously comply with the sections quoted above. It is however possible to apply for what is termed as an “unconventional” trade mark which may consist of a sound or movement.

The requirements for such marks remain the same in that the marks must be presented in an appropriate format such as a visual representation or, in the case of a sound or movement mark, via an MP3 or MP4 file.

Trademark examination ipo gov uk

(See under the specific type of mark in Part B of these guidelines)

5.4 Section 3(1)(b)

The following shall not be registered –

(b) trade marks which are devoid of distinctive character.

The purpose of this Section is to prohibit the registration of marks which cannot perform the function of identifying the goods and/or services of one undertaking from those of another undertaking, i.e.

the basic role of a trade mark.

Examples of such signs which would not function as a trade mark are promotional statements, i.e. “the best that money can buy”.

Teaching aids such as charts and educational models often fall foul of this provision also as the consumer is not used to such items being used as a trade mark.

Whilst it is possible for an objection to be raised against a mark purely because it is seen as non-distinctive this section is often used in conjunction with other sub-sections of 3(1).

Part A Introduction

Where an objection is raised because a mark is descriptive or customary in trade the relevant objection will also be accompanied by an objection under Section 3(1)(b).

5.5 Section 3(1)(c)

The following shall not be registered –

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographic origin, the time of production of goods or of rendering services, or other characteristics of goods and services.

This section is used to prohibit the registration of marks which would be seen purely as a descriptor of the characteristics of the goods and services the mark is to be used upon.

For example, a direct reference to the goods themselves, i.e. ‘soap’ for soap; or a term which may be descriptive of a feature of the product, ‘strawberry’ could be the smell of the soap. Such terms would be objectionable under section 3(1)(c) and would be accompanied by an objection under section 3(1)(b) as well because it naturally follows that if a mark is descriptive it must also be non-distinctive.

5.6 Section 3(1)(d)

The following shall not be registered- (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

Marks which contain signs that have become customary in trade cannot be registered as they will not perform the basic function of a trade mark, i.e.

to distinguish the goods and services of one provider from another’s. Such a sign might be a common name for a public house such as “The Red Lion” or five stars for hotel services.

An objection under section 3(1)(d) will be accompanied by an objection under section 3(1)(b).

5.7 Section 3(2)

A sign shall not be registered as a trade mark if it consists exclusively of- (a) the shape or another characteristic which results from the nature of the goods themselves, (b) the shape or another characteristic of goods which is necessary to obtain a technical result, or (c) the shape or another characteristic which gives substantial value to the goods

A shape or other characteristic, i.e.

sound mark is considered to fall into the category of a non-traditional trade mark as it is less common for a shape alone to be used as a trade mark. The test for distinctiveness however for any such mark is no different than what is considered to be a more traditional mark, i.e. words or a logo.

Where an application is made for a mark which consists of a shape or other characteristic which is derived purely from the goods themselves, where a shape or other characteristic is used to achieve nothing more than a technical function or such a shape or other characteristic could add value to a product the mark is likely to be found objectionable.

For example:

Shape of the goods themselves:

An image of a plain, unadorned football to be used for sporting articles in Class 28 would be considered to be objectionable under section 3(2)(a) of the Act.

Shape of the goods necessary to obtain a technical result:

An image of a children’s building block for toys in Class 28.

The specific shape of the block would be necessary to enable the blocks to be connected to others for building and therefore would be objectionable under section 3(2)(b).

Shape which gives substantial value to the goods:

Other characteristics: Sound

A repetitive high pitched sound would be considered to be an intrinsic part of a fire alarm.

An application for a mark which therefore consists of such a sound, applied for in relation to fire alarms, is likely to be subject to an objection under Section 3(2)(b).

A visually striking and aesthetically pleasing shape may be objectionable under section 3(2)(c) if it was felt that the shape adds substantial value to the product.

5.8 Section 3(3)

Section 3(3) prohibits the registration of marks which could either be offensive or if they could be seen as deceptive.

Section 3(3) states:

A trade mark shall not be registered if it is-

(a) contrary to public policy or to accepted principles of morality, or

(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).

Marks which may be ‘contrary to public policy’ are those, for example, that make specific references to illegal drugs such as cocaine, or would encourage some other kind of illegal activity. Such marks are likely to fall foul of Section 3(3)(a).

The same provision outlines that marks which are contrary to ‘accepted principles or morality’ cannot be accepted. This is a subjective area as what one person finds offensive may be perfectly acceptable to another and it is not the role of the Registry to act as an arbiter of morals. The test for such marks is therefore set at quite a high level, in essence the test is whether or not the use of such a mark would cause not just offence but outrage for an identifiable sector of the public.

The sorts of marks which may face objection here are those with racist connotations, a mark which includes strongly offensive language (swear words) or maybe a mark which includes the misuse of religious symbols.

The second provision under Section 3(3) relates to marks which are likely to deceive.

In order for a mark to be objectionable on these grounds there must be a real belief that a mark would deceive the public. Where a mark contains an indication that the goods claimed could be made of a material that is considered to be of a high quality such an objection is likely to arise.

Results of past trade mark decisions

For example, if a mark contained the word ‘gold’ and the specification covered jewellery the consumer would have a realistic expectation that the items are made from gold and not costume jewellery.

The examiner will outline, where possible, any way of overcoming such an objection.

5.9 Section 3(4)

Section 3(4) prohibits the registration of marks which contain words or imagery that is otherwise protected by UK or European law.

A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of EU law other than law relating to trade marks.

(4A) A trade mark is not to be registered if its registration is prohibited by or under-

(a) any enactment or rule of law,

(b) any provision of EU law, or

(c) any international agreement to which the United Kingdom or the EU is a party, providing for the protection of designations of origin or geographical indications.

(4B) A trade mark is not to be registered if its registration is prohibited by or under-

(a) any provision of EU law, or

(b) any international agreement to which the EU is a party, providing for the protection of traditional terms for wine or traditional specialities guaranteed.

(4C) A trade mark is not to be registered if it-

(a) consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and

(b) is in respect of plant varieties of the same or closely related species.

(4D) Subsection (4C)(a) refers to registration in accordance with any-

(a) enactment or rule of law,

(b) provision of EU law, or

(c) international agreement to which the United Kingdom or the EU is a party, providing for the protection of plant variety rights.

Marks containing a Red Cross would not be allowed under this provision, likewise the Olympic and Paralympic symbols could not be registered as they are protected under the Olympic Symbol etc (Protection) Act 1995.

Marks containing a Red Cross would not be allowed under this provision, likewise the Olympic and Paralympic symbols could not be registered as they are protected under the Olympic Symbol etc (Protection) Act 1995.

Similarly, marks which consist of a registered Plant Varietal Name (PVN) will be refused under this provision.

Signs being or containing Protected Designations of Origin (PDOs) or Protected Geographical Indications (PGIs) will also be subject to an objection under Section 3(4) of the Act.

5.10 Section 3(5)

Section 3(5) prohibits the use of Royal emblems, protected emblems and flags.

A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems).

A mark which will be objectionable under this section of the Act would be one where the flag of another country is contained within it and that flag is protected for example by Article 6ter of the Paris Convention.

5.11 Section 3(6)

Section 3(6) of the Act prohibits the registration of a mark where it is considered the application has been made in bad faith.

A trade mark shall not be registered if or to the extent that the application is made in bad faith.

An objection may arise under this section where the mark contains the name of a famous person and it appears the application was made by someone other than that individual.

Such an objection can be overcome however by obtaining written permission from that individual

5.12 Section 4

In general terms section 4 sets out various signs which cannot be accepted as part of a trade mark. This includes any mark which contains Royal arms, Royal crowns, a representation of Her Majesty or other members of the Royal family or any other signs which may lead a person to believe that goods or services marketed under such a sign would have received Royal patronage or authorisation.

Along with the above section 4 also excludes the inclusion of a national flag of the United Kingdom if it could be seen as misleading or grossly offensive.

It also precludes marks which contain the national emblems of other countries and international organisations.

5.13 Section 5

Section 5 states that marks which are either identical or similar to earlier marks and cover identical or similar goods and services shall not be registered.

However in October 2007 the legislation was changed using section 8 of the Act to allow for notification of earlier rights where a conflict is deemed to exist. For this reason the Registry conducts a search for prior rights as part of the examination process. Earlier marks which are considered similar or identical are merely drawn to the attention of the applicant. They no longer act as a bar to registration as they previously did under relative grounds. If the earlier right is a UK registered trade mark however the Registry will write to ‘notify’ the owner of that mark that a later application is proceeding to publication, if the applicant chooses to continue.

Where the examiner raises earlier marks in the examination report that they consider to be similar or identical the applicant will be given a single opportunity to respond in order to convince the examiner to waive the notification.

There are potentially a number of ways of doing this, i.e. giving reasons why the marks and/or goods or services are substantially different and therefore no notification is necessary, removing any goods or services which clash, obtaining consent from the owner of the earlier right or by withdrawing the entire application. If no response is received from the applicant, the application will proceed to publication and the notifications will be issued.

5.14 Section 41(2)

Section 41(2) allows for the filing of what is known as a ‘series’.

A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.

Practically this means that an applicant can file a maximum of six marks (with the same identity) within a single application.

Some additional fees may be incurred depending on the number of marks applied for. The series however will be subject to examination. As outlined in section 41(2), in order for a number of marks to be considered acceptable as a series, the marks should not differ in their material particulars. The examiner will consider whether the marks comply with these requirements and whether a single examination can be undertaken. If it is considered that more than one search is required in order to find all of the elements covered by the various marks a preliminary series objection and the applicant will be required to identify the marks he or she wishes to continue to examination.

However, if the marks do not constitute a series, maybe because the font differs and substantially changes the identity of the mark, but one search can be undertaken, a series objection will be contained in the body of the examination report. Further information regarding series marks can be found in Part B under the heading “SERIES”.

6. Examinations and objections

The above lists the types of objection an application for the registration of a trade mark might face.

When assessing an application however there are a number of requirements on the examiner.

6.1 Justification

Examiners must clearly outline and explain the objection they are raising in order that the applicant or their representative can fully understand the issue with their mark and can challenge the examiner’s opinions if necessary. The examiner will raise objections based on a factual and legal basis and will provide information, where appropriate, on what led them to object to the mark.

This may be based on a dictionary definition of the words found in the mark, because of Internet research conducted, because of case law or any other factual basis.

6.2 Use of the Internet

The Internet is a key tool used for research during examination.

If the findings from such research are used to base an objection upon the examiner will include the relevant hits they have found in the examination report. The applicant or representative will then have access to all facts and are able to challenge the findings where they disagree. Whilst it is not possible to be prescriptive over the nature of hits that can be used it is generally considered necessary to provide hits that pre-date the application, especially where an objection is to be raised under sections 3(1)(c) or 3(1)(d) and hits should originate from the UK.

Accordingly, where an Internet search has been conducted any relevant results should be sent to the representative or applicant with the examination report.

If a search is conducted later any relevant results should be disclosed to the representative/applicant.

If a hearing is scheduled within five working days of the later search, the representative/applicant should be given an opportunity to postpone the hearing.

Before an objection is taken under section 3(1)(d) it is necessary to pinpoint sufficient use of the sign by third parties prior to the date of the application to show that it was in use in the ‘customary language’ or ‘established practices of the trade’ at the relevant date.

It is not possible to lay down a minimum number of uses required to show this as much depends upon the nature of the hits (e.g. use in an advert for the goods/services in a popular daily newspaper would carry much more weight than an instance of journalistic use of the sign in an article on a web site).

In order to be relevant the use should be in the UK (e.g. UK website or extract from publications circulating in the UK). The references must show use that occurred before the relevant date. Extracts showing use on overseas websites (unless they include relevant extracts from UK publications) should not be used to support a section 3(1)(d) objection.

An objection under section 3(1)(b) and/or (c) may be appropriate where only a limited number of examples of use of the sign are found on the internet Examples of use of words in other jurisdictions are not usually conclusive without more evidence.

This is because the same word can be descriptive in one country and distinctive in another. However, overseas use may be relevant where:-

a) the ordinary meaning of the word(s) identified in the usual reference sources suggests that the sign may serve in trade in the UK as a description and the use made of the sign in other English speaking countries is merely confirmation that the sign is apt for such use here,

or

b) the hits suggest that the sign in question had, at the date of the application, been adopted in other English speaking countries as the name of (or an abbreviation for) a new sort of product or service.

It should be borne in mind that objections under section 3(1)(c) can only be based upon the existence or likelihood of the sign being used for descriptive purposes in trade in the goods/services.

One or two isolated examples of journalists using a word as a description will not, without more evidence, serve to show that an apparently meaningless or inapt word is apt for use in trade as a description. On the other hand, a persistent pattern of descriptive use by journalists (particularly in trade papers) is sufficient to establish that the sign is liable to be used in trade as a description.

Use after the date of the application is usually irrelevant. However, if an objection is raised under section 3(1)(c) which is based primarily upon the descriptive meaning of the word(s) identified in the usual reference works, then examples of descriptive use in trade after the date of application may be relevant.

This is because such examples confirm that the word(s) had descriptive potential at the date of application. In the absence of any other indication, we should take the date that the web-page was last updated as the date of the article for examination purposes.

Use of the sign as a trade mark on the applicant’s own web site is irrelevant and care should be taken not to include such material in examination reports. However, evidence of the applicant using the sign in an obviously descriptive manner may be relevant.

6.3 Responding to the examination report

If an applicant disagrees with an objection that has been raised against their mark, or an objection to terms within their specification, (classification objections), they may discuss this with the examiner either via telephone or by making written submissions.

Further information on overcoming objections can be found in Part D.

6.4 Precedents

The individual circumstances surrounding each application are paramount. ‘Precedents’ cannot be decisive.

The comments made in the MADAME case (1966) RPC page 545 were re-stated by Mr Justice Jacob in the TREAT trade mark case (1996) RPC page 25:

In particular the state of the Register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the Registrar to put the marks concerned on the Register.

It has long been held under the old Act that comparison with other marks on the Register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. Madame TM and the same must be true under the 1994 Act.

7. Amendments to an application

Section 39(1) states:

The applicant may at any time withdraw his application or restrict the goods or services covered by the application.

If the application has been published, the withdrawal or restriction shall also be published.

(2) In other respects, an application may be amended, at the request of the applicant only by correcting – (a) the name and address of the applicant, (b) errors of wording or of copying, or (c) obvious mistakes, and then only where the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application.

(3) Provision shall be made by the rules for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application, and for the making of objections by any person claiming to be affected by it.

It is, of course, very difficult to determine what an “error of wording” or “obvious mistake” is, but the most important part of this section of the Act is the final few lines, which permit very few amendments to the mark itself.

It would not be an obvious mistake if e.g. a mark written as SELECTA should have been filed as SELECTOR, trade marks often consist of misspellings of well-known words. Even if it was an error such a change would substantially affect the identity of the trade mark.

If an amendment to the trade mark or the list of goods and services is requested after advertisement, and the amendment is permitted, the amendment to the mark must be advertised (section 39(3), rule 18).

In the registrar’s view, “the application” for the purposes of section 39(1) consists of the items listed in section 32(2) of the Act.

The Class number(s) entered on the application form are considered to be part of the statement of goods or services.

Other matters covered on the application form, such as the agent’s details and limitations or disclaimers are not covered by the restrictions set out in section 39(1) and can be amended, deleted or inserted subject to the provisions of the appropriate rules.

8.

Acceptance and publication

Once an application has been accepted by the Registry it must be published for a period of two months. This period allows any third party the opportunity to oppose the acceptance of the mark if they have an issue with it, for example, it may be considered too similar to another mark.

If any opposition is received it will be dealt with by the Tribunal Section. Where no opposition is received the mark will be registered and a certificate of registration will be issued to the applicant.

9.

Trademark examination ipo gov uk

Post publication

Once accepted by the examiner, all applications go through a publication process. Marks are advertised for opposition purposes for a two month period. Providing no opposition is received the application will become registered. There are however some instances in which an application will not proceed to registration, even where no opposition is filed.

10.

Observation (Post advertisement)

Section 38(3) of the Act provides that, once an application has been published, any person may at any time before registration, make observations as to whether a trade mark should be registered.

Where an application has been published, any person may, at any time before registration of the trade mark, make observations in writing to the registrar as to whether the trade mark should be registered; and the registrar shall inform the applicant of any such observations.

Section 40(1) of the Act (as recently amended by The Trade Marks (Proof of Use) Regulations 2004) states that, where no notice of opposition is filed or opposition is withdrawn or decided in favour of the applicant, the registrar shall register the trade mark:

…unless it appears to him having regard to matters coming to his notice since the application was accepted that the registration requirements (other than those mentioned in section 5(1),(2) or (3)) were not met at that time.

Consequently, for applications published after 5 May 2004, objections based upon the existence of earlier conflicting trade marks can only be raised after publication in opposition or invalidation proceedings.

Further references to “new matters” should be taken to exclude matters arising under sections 5(1)-(3) of the Act.

The registrar will consider any new matter which comes to his notice after publication which shows that the requirements for registration (other than those mentioned in section 5(1), (2) or (3)) were not met at the date of acceptance.

Where the circumstances suggest that the decision to accept the trade mark was the result of facts being misconstrued (such as evidence of use only showing use of a mark on a small proportion of the goods listed in the specification published), the registrar will consider the matter afresh.

Where an observer informs the registrar that a trade mark is descriptive or a sign commonly used in the trade, the observation will be regarded as a new matter.

However, observations to the effect that the mark is generic will normally only be acted upon if the observer provides examples of customary use in the relevant trade (preferably by at least two other traders) or other supporting information (such as extracts from trade publications or reference works).

When a post advertisement observation is received

The registrar will give an initial opinion on any new matter which comes to his attention as soon as possible after publication.

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The registrar will write to the applicant indicating whether (or not), taking account of the observations (which will be attached) he now believes that the registration requirements were not met when the application was accepted.

If the registrar takes the view that the registration requirements were not met at the date of acceptance, the applicant will be asked to comment upon the observation; but he need not reply before the opposition period is over.

A copy of the letter to the applicant, setting out the registrar’s position in the light of the matter raised, will be copied to the party filing observations.

It will be stressed that this is the registrar’s provisional view and that it may change after considering the applicant’s submissions or in the light of further observations.

Where the Application does not appear to have met the requirements for

registration at the time of acceptance

In addition to the applicant’s usual right to make submissions to the registrar on the late objection, the applicant will also be entitled to amend the specification so as to overcome the objection or to submit (further) evidence in support of the application.

If the specification of an application is restricted the amendment will be open to a further one month opposition period under rule 18.

Unless the registrar’s provisional assessment (that the application did not meet the requirements for registration at the time of acceptance) can be reversed or the objection otherwise overcome, the registrar will refuse to register the trade mark.

However, notice of refusal will not be issued before the opposition period expires.

Applications allowed to proceed to registration

If after considering the observations and any submissions from the applicant, the Registrar decides that the mark should be registered, he will proceed accordingly.

The only further action open to the party filing observations will be invalidity proceedings under section 47 of the 1994 Act.

Applications also subject to other opposition proceedings

Given that the registrar is not permitted to re-assess the acceptability of an application in the light of earlier trade marks (other than through opposition proceedings), it will often be the case that where the same application is subject to a late objection and opposition the two will be based on different grounds.

In these circumstances the registrar will seek to deal with the observations in parallel with any opposition proceedings. The registrar has no power to extend the period for filing opposition and can only extend the time for filing a counterstatement in the circumstances set out in rule 13.

Subject to these constraints, the registrar will consider an application from either party to stay the opposition proceedings to await the outcome of the late objection.

If the registrar decides to refuse the application, a notice of refusal will be issued. The outstanding opposition proceedings will then only have to be dealt with if the registrar’s decision to refuse registration is reversed on appeal. If opposition is filed on the same grounds as observations, the registrar will, in general, suspend any further action on the observations until the opposition proceedings are concluded.

The registrar cannot act in a quasi-judicial capacity, as a tribunal determining an opposition between two parties whilst pursuing (or rejecting) the same grounds of objection in ex parte proceedings with the applicant. However, where the parties jointly request it, the registrar may agree to stay the opposition proceedings in order to deal with the observation first.

11.

Late objections

Section 40 of the Act requires that, providing no opposition is filed, or where

Section 40 of the Act requires that, providing no opposition is filed, or where opposition against a mark has been unsuccessful, an application must be registered. It does however contain a clause that allows the registrar to raise a late objection if necessary.

Unless it appears to him having regard to matters coming to his notice since he accepted the application that it was accepted in error.

Whilst it is practice to raise any objections during the examination procedure, if further information becomes available to the Registrar a late objection can be raised.

It is rare for this to happen and a response period will be set in order that the applicant can make submissions in support of the application, as they would have done should the objection have been raised during the examination procedure.

12. Confidentiality

Unless confidentiality has been agreed all documents and correspondence on 1994 Act applications will be open to public inspection after the mark has been published.

1938 Act registrations will only be open to public inspection in respect of correspondence and documents filed after registration.

Section 67 provides that anyone may inspect the contents of any file once the mark in question has been published.

Section 67(2) provides that certain documents may also be seen before publication. These are:

the application form

or

any forms which have been filed to amend it, including particulars filed which covers registrable transactions, e.g.

assignments.

The presumption is that, once an application has been published, the file is open to public inspection. Section 67 of the Trade Marks Act 1994 provides for there to be restrictions to this general presumption.

There is no general exception which covers sales and/or advertising figures as such. There is provision for an applicant to request confidentiality for a particular document (or part of a document). To do so they must give their reasons.

If it had been the intention for all sales and advertising figures submitted in ex parte evidence to be kept confidential the rules might have been expected to reflect this.

There will be occasions where it can be shown that, for specific reasons, public inspection of particular sales or advertising figures will be damaging to the applicant and in such a case favourable consideration will be given to a request for confidentiality. Depending on the weight of the case for confidentiality and the significance of the figures to the monopoly being sought, the Registrar may agree that the figures for particular periods be kept confidential either absolutely, or on condition that a supplementary summary, showing the figures in a less specific way, be submitted for the public record.

For example sales for a particular period could be expressed as being not less than £XXX, or between £XXX and £YYY. In such a case the summary may be made available for public inspection but the actual figures kept in the confidential section of the file.

It is always open to the applicant or their representative to submit evidence in a form that avoids the need to refer to specific figures.

For example, one applicant submitted evidence which provided details of the length of user, the number of outlets through which the goods had been sold and their location, and a “not less than” figure for sales through each outlet. The point being that it is not always necessary to provide precise sales figures in order to establish factual distinctiveness.

The registrar has agreed to confidentiality in cases where either sales figures were not central to the decision to accept the application, or specific reasons for keeping them confidential were provided.

Most requests for confidentiality so far received have not included reasons to justify the request beyond generalities such as the exhibit “contains sensitive commercial information”.

These have not been accepted. However, if specific reasons are provided for such requests the registrar must consider them and, if justified, agree to confidentiality.

The issue of confidentiality of documents submitted to the Patent Office (as it then was) was considered in the Diamond Shamrock Technologies SA case (1987 RPC page 91). This was a patent case, but the rules are similar. The issue was whether royalty payments and prices under a licensing agreement should be kept confidential.

At page 93, line 22, Mr Justice Whitford said:-

It is commonplace in connection with a variety of proceedings, and patent proceedings are no exception, that the parties to the proceedings want material to be kept confidential.

There are matters which they do not want to be disclosed to the public at large. What is said in these letters is that this, that or the other information contained in the declarations or exhibits should be kept confidential because “it contains sensitive commercial information.

I think it is desirable that a more exact indication should be given as to the reasons why in truth the document ought not to be disclosed because it is easy enough to talk about the material being of commercial interest and to talk of it being sensitive.

Crypto cartel trading competition

That fact in itself does not necessarily mean that the material, which would otherwise become public property because it was included in the documents which are going to be open to public inspection, is to be excluded from public inspection.” Where full reasons for the request are given, the applicant’s desire for commercially sensitive information to be kept secret should be balanced against its significance in the context of the application.

If the application is only proceeding because of evidence of use there would have to be very strong commercial reasons why the sales figures should not be open to inspection.

The request for confidentiality must be made at the time the information is filed (or within 14 days of filing it).

13.

Learn how to trade options options

Onus (During examination)

There is an onus on the Registrar to examine an application specifically according to the goods and services on which the mark is to be used. This principle is well established in case law and means that, when considering a mark against the requirements as set out above, an examiner must outline the goods or services to which any objection applies.

Best option media sl

It is therefore quite possible that an objection may apply to only some of the goods or services listed in the specification of the application and the examiner will clearly indicate, in their opinion, where the mark is or isn’t acceptable.

Geoffrey Hobbs Q.C., acting as The Appointed Person, heard arguments in the EUROLAMB trade mark case (1997) RPC 279 about whether there is an onus on the registrar to justify objections to applications.

He decided that:

a.

Section 37 is neutral and there is no presumption in favour of or against registration;

b.

Manual of trade marks practice

The combined effect of sections 37(4) and (5) is to eliminate the discretion that the Registrar previously had and to put him in a position of having to make a judgment, yes or no, upon the materials before him as to the registrability of a mark;

c. There is nothing in the nature of a burden for the Registrar to discharge in order to justify his decision to refuse an application.

  1. Saving Provisions (Relevance)

The following statement was made by Geoffrey Hobbs QC in his capacity as the Appointed Person in relation to an appeal against the refusal of an application for the mark ‘AD 2000’ (1997) RPC 168.

Although Section 11 of the Act contains various provisions designed to protect the legitimate interests of honest traders, the first line of protection is to refuse the registration of signs which are excluded from registration by the provisions of Section 3.

In this regard, I consider that the approach to be adopted with regard to registrability under the 1994 Act is the same as the approach adopted under the old Act. This was summarised by Robin Jacobs Esq. QC in his decision on behalf of the Secretary of State in Colorcoat TM (1990) RPC 511 at 517 in the following terms: ‘That possible defences (and in particular that the use is merely as a bona fide description) should not be taken into account when considering registration is well settled, see e.g.

Yorkshire TM (1954) RPC 150 at 154 lines 20-25 per Viscount Simonds LC.

Trademark examination ipo gov uk

“Essentially the reason for this is that the privilege of a monopoly should not be conferred where it might require honest men to look for a defence.

The ECJ in Libertel Groep BV and Benelux- Merkenbureau confirmed that:

…examination carried out at the time of application must not be a minimal one.

It must be a stringent and full examination, in order to prevent trade marks from being improperly registered. As the Court has already held, for reasons of legal certainty and good administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered.

Case C-104/01.

Part B: Alphabetical list of examination practice

A

Airport

Names of airports will normally be acceptable for air transport services.

Objections will only be taken under section 3(1)(b) and (c) where specifications include non-air transport services such as shuttle buses, taxis etc and car parking services.

Trademark examination ipo gov uk

It is likely that consumers would expect there to be more than one undertaking providing transport services to and from an airport and that the sign would therefore be seen as descriptive of the destination or the intended purpose of the services, for example.

This also extends to other transportation services such as freight and cargo services.

Animals (Images of)

Images of animals are often distinctive trade marks.

However, care needs to be taken in respect of images of animals where there is a connection between the animal and the goods and services applied for. For example, a representation of a dog in respect of kennel services would be considered non distinctive. Some animals will be inherently non distinctive for certain goods e.g. cows or goats for milk, butter, cheese and other dairy products; sheep for wool products; and images of some animals in respect of leather, skin or hides.

Such images are likely to be subject to an objection when used on corresponding goods unless the mark is presented in a fanciful way. For example, a laughing or dancing cow would be clearly fanciful for milk or dairy products and no objection will be deemed appropriate.

Care also needs to be taken in relation to goods aimed at children such as e.g. clothing and bedding etc., where pictorial representations of animals are frequently used as decoration.

As a rule of thumb, the more appealing the representation, the more likely it is to be attractive to children and be seen as mere decoration and the less likely it is to be seen as a trade mark. An objection will be raised under section 3(1)(b) where appropriate.

Armorial bearings, heraldic devices and coats of arms

Trade marks containing armorial bearings, heraldic devices and coats of arms are generally acceptable at the examination stage. However, the Registrar will always advise applicants seeking protection for such marks to contact the Garter King of Arms (who is responsible for granting arms in England, Wales and Northern Ireland) and the Lord Lyon (who is responsible for granting arms in Scotland).

This is to ensure that there is no conflict with granted arms and insignia holders.

Where the holder of an earlier right submits observations, following the acceptance of a mark, on the basis that the application appears to conflict with their own granted arms or insignia, such information will be considered by the Registrar. A late objection under sections 3(5) and 4(4) may be taken in accordance with rule 10 of the Trade Marks Rule (2008).

Please note that this this practice does not apply to trade marks containing or consisting of either Royal coats of arms or any other Royal insignia.

Such trade marks will be subject to other objections, as explained in the section headed ‘ROYAL MARKS’.

Awards (Images of)

Representations of awards, medals or coins are considered non-distinctive if used in isolation, unless they contain a distinctive element.

Wine labels often include images of medals or coins which represent awards that the wine has won. There is no requirement for the applicant to prove that the claim is valid.

The award or recognition will be taken in good faith.

B

Bio

‘Bio’ is a well-known abbreviation for the term ‘biological’ and is commonly added to other words to indicate a biological factor.

Whether presented alone or with a descriptive prefix or suffix, the term ‘bio’ will be treated as if it were the word ‘biological’ and an objection under section 3(1)(b) and (c) will be raised where the word ‘biological’ (together with any other elements present) is considered descriptive and non distinctive for the goods/services claimed.

C

Cartoon characters

A cartoon character can often function as a distinctive trade mark when used in relation to most goods and services.

However when it is used in relation to goods or services such as clothing, soft toys, or nursery services etc, the following points will be considered and objections raised as appropriate under section 3(1)(b):

  • the image should be treated the same way regardless of whether it is two-dimensional or three-dimensional;
  • the marks must be sufficiently individual as to differentiate them from standard variations for the goods where animals/cartoons are commonly used as decoration e.g.

    children’s clothes, children’s blankets; paediatrician service

  • there is usually a wide range of product variation for toy shapes including plush toys (which often have cartoon-like features) in almost any animal. It is commonplace for animals to be given a human characteristic or to be dressed up in clothes. Therefore variation from the norm for these goods would rarely be sufficient for the mark to act as a badge of trade origin. However giving an inanimate object human characteristics is more likely to work, for example, a chocolate egg with facial features, arms and legs

CE Mark

The letters ‘CE’, presented in the stylised form as shown below, appear on many products that are traded in the single market or the European Economic Area (EEA).

The letters are used to signify that a product conforms with the requirements of specific EC Directives.

Any mark containing these letters will face an objection under sections 3(4) and 3(3)(b). Consent cannot be obtained to register this as part of a trade mark.

Chartered

Trade mark applications which contain the word ‘chartered’ normally take the form of an application to register the name of an organisation or other body, for example ‘The Chartered Institute of Surveyors’, or an attempt to register the name of a Chartered professional title as in ‘Chartered Surveyor’.

Chartered status is granted by the Queen and therefore use of this word is controlled.

It is also protected under Company Law and can only be used as part of a trade mark if the body concerned has the legal authority within its charter to do so. Therefore all trade marks containing the word ‘chartered’ will be subject to objection under section 3(4).

The mark would also be objectionable on the basis that it is deceptive, under section 3(3)(b), as the mark infers chartered status when it has not been proved that the applicant is entitled to use such a qualification.

In all cases, the applicant must provide a copy of the Charter document in order to address the objections under sections 3(3)(b) and 3(4).

Where the application is intended to protect the name of an organisation, provision of an appropriate Charter document is sufficient to overcome the objection. However, where the mark denotes the name of a professional title, more information may be required. In particular, the applicant must not only hold a Charter document per se, but the document must also confirm the applicant’s entitlement to hold a trade mark registration in respect of that professional title.

If, on receipt of the Charter document, it cannot be determined whether or not this is the case, the examiner will consult with the Privy Council Office for further information.

Where the mark is also devoid of any distinctive character and/or descriptive, an objection under sections 3(1)(b) and (c) will also be taken. For example, signs which denote professional titles used by members of Chartered organisations (such as e.g. ‘Chartered Accountant’), are open to objection regardless of the applicant’s ability to prove its entitlement by way of a Royal Charter.

Where the mark as a whole is considered distinctive, such as ‘Chartered Institute of Accountants’ an objection under section 3(1)(b) and (c) would not be appropriate, as this denotes a professional body, namely a single entity.

Trade mark

However the applicant will still need to provide proof of its entitlement to both use and register the mark in order to overcome objections under sections 3(3) and 3(4).

Cocktail names

As cocktail names can be produced without the need for any major manufacturing process, in theory anyone can invent and name a new cocktail.

It is this ‘ease’ of naming cocktails and publishing recipes on the internet that creates difficulty when determining the distinctiveness of cocktail names.

The Registrar will conduct an internet search to determine whether the mark is capable of indicating trade origin.

If the results of the search suggest reasonably widespread use amongst e.g. hotels, bars, and restaurants, then a section 3(1)(b) and (c) objection will be taken.

Colour(s)

Representation of the mark The representation of a colour mark must consist of a representation of the colour or colours without contours in one single JPEG file or on one single A4 sheet. Where there is more than one colour, the reproduction must show the systematic arrangement of the colour combination.

In Libertel C-104/01 the ECJ confirmed that to be represented graphically, colour marks must be presented in a way that is “clear, precise, self-contained, easily accessible, intelligible, durable and objective” as per Sieckmann C-273/00.

In the Libertel case the court determined that providing a sample of the colour(s) proposed for registration on paper is not sufficient by itself to satisfy the requirement for the clear representation of the sign.

However, the court stated that the “Sieckmann criteria” may be satisfied by designating the colour using an internationally recognised colour identification code.

Single Colours

A mark consisting of colour alone will be considered to be appropriately represented if it is filed with a sample of the colour together with a written description of the colour (e.g.

‘dark blue’) and is accompanied by the relevant code from an internationally recognised colour identification system.

There are a number of colour identification systems in existence e.g. Pantone®, RAL and Focoltone®. This is not an exhaustive list and the choice of which system to use is for the applicant to decide. Where a sample of the colour and a description in words are used to represent a colour mark, the two must be integrated so as to disclose the mark applied for in an unambiguous manner - the colour shown and the stated colour code should not contradict each other.

A degree of interpretation of the mark is permissible.

For example, it is acceptable to assume that third parties have the capacity to look up the colour which corresponds with a particular colour code. However, there are limits to what can reasonably be expected of third parties. It must be reasonably practicable for persons inspecting the register, or reading the Trade Mark Journal, to be able to gain an understanding from the representation of what the trade mark is.

Alternative ways of representing colour marks may be accepted as long as they satisfy the criteria set out above.

Representations which are precise but impossible to interpret without costly specialist equipment or services, or which place too high a burden on third parties, are likely to be rejected because they are not easily accessible.

Accordingly, a mark defined as “a blue bottle of optical characteristics such that if the wall thickness is 3mm the bottle has, in air, a dominant wavelength of 472 to 474 nanometres, a purity of 44 to 48%, an optical brightness of 28 to 32%” was rejected by The Appointed Person in Ty Nant Spring Water Ltd’s application (BL O/241/99) because it would require third parties to use a spectrophotometer to ascertain whether a particular colour was or was not covered by the description, and in fact served to veil the identity of the sign (cobalt blue).

Combinations of colours

In Heidelberger Bauchemie GmbH (C-49/02), the CJEU introduced an additional requirement for marks consisting of a combination of colours in the abstract, without contours.

In such cases, the Court confirmed that the representation must also include “a systematic arrangement associating the colours in a predetermined and uniform way”.

Unfortunately, it is not very clear what this means in practice. The Court offered no examples of the ways in which the requirement might be satisfied. However, the following representation of EuropeanTrade Mark (‘EUTM’) number 2177566 appears to plainly fall within the guidance.

Mark Description: The distribution and ratio of the colours to each other is 50-50, whereby the colour blue runs horizontally above the colour red, forming a striped whole.

Indication of colour: Blue: Ral 5015; Red: Ral 2002.

Alternative ways of graphically representing colour marks may be accepted as long as they satisfy the criteria set out above.

Colour(s) in the Abstract

The CJEU has made it clear that there is no reason why, in principle, colour(s) cannot be registered in the abstract, as opposed to specific applications of colour such as being applied to the exterior of the goods themselves, or to their packaging.

Descriptions such as “as shown on the form of application” have been found to be an inadequate means of limiting the mark to the precise form shown in the pictorial representation of the mark on the application form (see, for example, the Advocate General’s Opinion in Dyson Ltd v Registrar of Trade Marks (C-321/03) subsequently endorsed in the CJEU’s judgment of 25 January 2007).

Consequently, “as shown on the form of application” will no longer be accepted as limiting the mark. Instead, more precise wording such as, “in the [arrangement/position] depicted in the pictorial representation of the mark” should be used.

Applications made for a colour per se, accompanied by a sample of the colour and a form of description which implies (rather than categorically defines) how the colour is intended to be used is not considered acceptable.

The decision of the Court of Appeal in Société Des Produits Nestlé SA v Cadbury UK Ltd (Case [2013] EWCA Civ 1174 refers). The original application had been made by Cadbury for a specific shade of purple, and the sample of the colour was accompanied by the following description:

“The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”.

The Court summed up its view in paragraph 50 by stating:

The use of the word “predominant” opens the door to a multitude of different visual forms as a result of its implied reference to other colours and other visual material not displayed or described in the application and over which the colour purple may predominate.

It is an application for the registration of a shade of colour ‘plus’ other material, not of just an unchanging application of a single colour, as in Libertel.

Applicants should consider whether the way colour is used forms an essential part of the subject matter of their trade mark. For example, if evidence of acquired distinctiveness is likely to show that a specific colour has come to be recognised as a trade mark when used in a particular manner (e.g.

on the sides of the overhead canopy of a fuel service station), it may be advisable to define the mark in this way from the outset. Applicants should note that it is not possible to amend one’s trade mark in ways which substantially affect the identity of said mark after the application has been submitted.

Assessing distinctive character

Single colours

In Libertel (C-104/01) the Court decided that colour per se may have a distinctive character and may be capable of distinguishing the goods and services of one undertaking from those of other undertakings.

However, as colour per se is not normally used by traders as a means of brand identification (unlike, for example, words and pictures), consumers are not in the habit of making assumptions about the origin of goods and services based solely on their colour or the colour of their packaging.

It therefore follows that single colours will only be deemed capable of denoting the origin of a product or service in exceptional circumstances. Marks consisting of a single colour will usually be liable to objection under section 3(1)(b) because they lack the capacity to distinguish. In some cases, single colours may also attract additional objections under section 3(1)(c) and (d) if the colour sends a descriptive message and/or it is customary in the trade i.e.

the colour red for fire-fighting services, or the colour green for ecological goods/services. There may be occasions where colour applied to the goods themselves may be inherently more distinctive than when the colour is applied to the packaging; for example, blue for strawberries, in Class 31, would have the capacity to denote trade origin yet the same colour applied to packaging of strawberries, in Class 16, would be non-distinctive.

The examination of single colour marks requires careful analysis, not least because there is a public interest in not unduly limiting the availability of colours for other traders.

Each case must be assessed individually.

Two or more colours

A combination of colours may be registrable, but all will depend on how the colours are presented and what they are applied to. When applications consist merely of colours applied to the goods or their packaging, it will be necessary to consider how unusual the colour combination is in relation to the goods and whether prima facie the combination is likely to strike the relevant consumer as an indication of trade source.

For example, it is unlikely that the average consumer of washing tablets would, without extensive and exclusive use, view colour combinations such as green and white or yellow and white as an indication of trade source; it is more likely that they would be taken to indicate the presence of two active ingredients and therefore be given no trade mark consideration.

If multiple colours are presented as a figurative mark (for example, two colours presented within a geometric shape such as a square or circle), then as few as two colours could be accepted; however if they are simply the colours of the packaging of the product they are less likely prima facie to indicate trade source.

In addition, when considering whether colour combination marks are liable to objection under section 3(1)(b), as with single colours, consideration under section 3(1)(c) and (d) must also be given.

Company names

The term ‘company’ or ‘limited’ paired with a word (or words) which describes the goods and/or services intended for protection is unlikely to meet the requirements for registration on the basis that the resulting combination would still be descriptive and/or devoid of any distinctive character.

For example, the sign ‘Soap Company’ would not be acceptable as it merely describes a company that produces soap. Similarly, the sign ‘The Organic Food Company’ would also be unacceptable as there are likely to be a large number of organic food producers which would refer to themselves as being the definitive organic food company.

The addition of ‘company limited’ or ‘Plc’ may provide some capacity to indicate trade origin, rather than just as a generic reference to a particular type of business activity.

For example the mark ‘The Puppet Company’ would be considered to be descriptive whereas ‘The Puppet Company Limited’ would indicate trade origin and considered to be acceptable.

The addition of a company name to words describing characteristics of the goods or services, rather than the generic name of the goods themselves, will usually be sufficient to bestow distinctive character e.g.

the mark ‘Soft and Gentle’ would not be acceptable for soap whereas ‘Soft and Gentle Limited‘ would be seen as fanciful and therefore acceptable.

The Cultural Emblem

Any image which consists of or contains ‘The Cultural Emblem’ will be subject to an objection under Section 4(3) of the Act as unauthorised use or misuse of this specially protected emblem is forbidden under international law.

The Cultural Emblem comprises of a blue and white shield, also known simply as the ‘Blue Shield’, which is the identifying sign for the protection of cultural property in armed conflict (under the 1954 Hague Convention).

Any application containing this protected symbol, seeking protection in respect of any goods or services, will be subject to an objection unless it appears to the registrar that consent has been given for or on behalf of the competent authority.

D

Deceptive marks

Section 3(3)(b) states:

(3) A trade mark shall not be registered if it is -

(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origins of the goods or service).

In Elizabeth Emanuel v Continental Shelf 128 Ltd, C-259/04, the CJEU stated in paragraph 47 of its judgment that the application of this provision “presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived”.

An objection under section 3(3)(b) should therefore only be raised where there is a real potential for deception of the public, regardless of the distinctiveness of the mark as a whole. In cases where a trade mark refers to a particular place-name, an objection under section 3(3)(b) will only be justified where:

  • the trade mark refers to a place-name which has a current reputation for, or association with, particular goods or services; and
  • the application seeks to protect those goods or services (either because they are explicitly listed within the specification, or because they are ‘caught’ within the scope of wider terms used).

Nature

A mark is acceptable if there is no realistic possibility of deception.

For example, the mark ‘Hartley’s Strawberry Jam’ for ‘jams and preserves’ would be acceptable, as would the mark ‘Britvic Orange Juice’ for ‘fruit juices’. It would be assumed that the proprietor would only use the marks on strawberry jam and orange juice respectively, otherwise they will fall foul of Trading Standards legislation.

If an applicant seeks to exclude goods or services from the specification in response to a section 3(1) objection, the mark should be reconsidered to establish whether it has now become deceptive under section 3(3).

To illustrate, the mark ‘Titanium’, applied for in respect of ‘building products’ would, at first examination, face an objection under section 3(1)(b) and (c) on account of its capacity to describe the goods (i.e. those made of titanium). It would not, at the examination stage, face any deceptiveness objection under section 3(3), on account of the fact that it would appear to be against a trader’s own interests to use such a mark on anything other than building products made of titanium.

However, if the applicant subsequently sought to exclude titanium goods as a means of overcoming the section 3(1)(b) and (c) objection, a section 3(3)(b) objection would be raised as it would now be deceptive for goods not made of titanium.

Quality

Section 3(3)(b) objections are applicable to marks which indicate a particular desirable quality of the goods.

A desirable quality could be defined as something you pay extra for e.g. silk or cashmere clothing. It can also be based on a cultural distinction, for example, where one perceives halal or kosher foodstuffs to be of a superior quality. For some terms such as ‘organic’, there may be regulatory arrangements which must be adhered to before the term can be used in trade.

If the mark indicates a desirable quality and the goods or services do not comply with that desirable quality, then there is the real likelihood that consumer’s decision to purchase would be based on an expectation that the goods possess that ‘desirable quality’.

In such cases, an objection will be taken.

Geographical location

Where a trade mark includes reference to a particular geographical location, and it is being used in respect of goods or services for which that location has a particular association, it is reasonable to believe that the relevant consumer would genuinely expect the product to have originated from the referenced location.

Consider, for example, the following:

WHYTE’S SOMERSET CIDER Intended for use in respect of ‘cider’

On the basis that Somerset has a well-known reputation for producing cider, the relevant consumer would, at the point of selection and/or purchase, expect the product to have been produced in Somerset.

Furthermore, the quality associated with cider produced in Somerset (as opposed to anywhere else in the world) may well influence the consumer’s decision to select and/or purchase that particular product over any other.

In such a case, where the geographical reference contained within the mark is understood to be an objective indicator of quality (resulting from Somerset’s reputation for cider), deception would occur wherever the product sold under the trade mark does not correspond to the geographical reference as presented in the trade mark.

Part B: Alphabetical list of examination practice

So in this case, the mark shown above would deceive the public if used in respect of ciders produced outside of Somerset.

This logic will apply in any and all scenarios where a trade mark seeks to take advantage of a known geographical reputation by protecting corresponding products. It is not limited to foodstuffs.

Trademark examination ipo gov uk

The following examples reflect the practice in relation to both quality and geographical origin:

Lyon’s cashmere for ‘jumpers’

Objectionable because cashmere is more desirable than other fabrics

Artic leather for ‘clothing’

Objectionable because imitation leather is inferior to the genuine article, and can be passed off as (real) leather

Brassrite for ‘plumbing fittings’

Objectionable because brass fittings are perceived as being a better quality than their plastic equivalents

Moonsilk for ‘underwear’

Objectionable because silk is more desirable than other fabrics

Storm diamond for ‘jewellery’

Objectionable because one would pay more for real diamonds

Poh perfectly organic hampers for ‘sale of foodstuffs and beverages’

Objectionable because one would pay more for organic produce

Swisstex for ‘watches’

Objectionable because switzerland has a recognised reputation for producing high quality timepieces

Highland scotch for ‘alcoholic beverages’

Objectionable because the consumer would have an expectation that the product is genuine scotch whisky (see dedicated section on scotch and scotch whisky)

In each of the examples listed above, the list of goods/services should be restricted to the specific goods/services contained in the specification otherwise the application would be refused, for example-

Moonsilk for ‘silk underwear’

Poh perfectly organic hampers for ‘sale of organic foodstuffs and organic beverages’

Both would be acceptable.

Where a trade mark consists of decoration to be applied to a shoe, the applicant may wish to show it in context i.e.

showing its actual position on a shoe. It is commonplace for those elements which are not intended to be part of the trade mark to be shown in broken lines, which is an acceptable form of presentation.

Alternatively this can be supported by inserting a mark text on the application form, for example-

The mark consists of five parallel stripes placed on the side of footwear as shown in the attached representation. The dotted lines do not form part of the mark and are entered to show the position of the mark on the goods.

Such marks will only be considered acceptable if they are sufficiently distinctive, as confirmed by the General Court’s decision in K-Swiss Inc v OHIM (T-3/15) which considered the trade mark as shown below:

Description of the shape of the goods

Section 3(1)(c) excludes trade marks which consist exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods.

This would refer to words which describe the shape of the product, as well as a naturalistic representations of the shape itself.

For goods that may come in a variety of forms such as, for example, chocolate products, soap, and jewellery, an objection may be appropriate if it describes the shape of the product (as opposed to the generic name of the product itself).

To illustrate, the word ‘bunny’ filed in respect of chocolate products, will face an objection under section 3(1)(c) because it is commonplace for such products to be in the shape of animals e.g.

bunnies. Not all words describing shapes will be considered to be descriptive; one must weigh up the balance of probability. For example, although one cannot rule out the possibility that chocolates might be made in the shape of a tulip, the likelihood is less than, say, chocolates produced in the shape of bunny rabbits.

As a consequence, and in the absence of evidence to the contrary, the word ‘tulip’, applied for in respect of ‘chocolate confectionery’ would not attract an objection under section 3(1)(c).

Direct

The word ‘direct’ is descriptive when used in respect of services sold directly to the public, instead of through a broker or other intermediary, or for the specific goods themselves.

It will be usual to object under sections 3(1)(b) and (c) when used alone or in combination with the name of the goods/services provided e.g. ‘DIRECT SWIMWEAR’ or ‘SWIMWEAR DIRECT’. However, this rule will not normally apply where the mark’s secondary element does not describe the product intended for protection (whether a good or a service).

For example, the phrase ‘SWIMMING DIRECT’, intended for use in respect of swimming equipment, would not face an objection because the word ‘swimming’ denotes an activity, not a product. In contrast the phrases ‘DIRECT SWIMMING AIDS’ and ‘SWIMMING GOGGLES DIRECT’, would both face objection.

Domain names

General guidance

Generic individual elements of top level domains (gTLDs) such as ‘.com’ or ‘.co.uk’ (whether a prefix or a suffix) are considered to be totally non-distinctive.

However, domain names presented in their entirety (e.g. ‘www.ipo.gov.uk’ or ‘ipo.gov.uk’) can be registered as trade marks provided they are distinctive in totality. As a general rule, one should consider whether the remainder of the mark (i.e. the elements other than ‘www’, ‘.com’ or ‘.co.uk’ etc.) is descriptive or non-distinctive. If so, there is likely to be an objection under sections 3(1)(b) and (c). For example, the signs ‘cars.com’ and ‘www.soap.com’ would be unacceptable as they merely describe the provision of cars and soaps via the Internet.

In PHOTOS.COM (C-70/13), the following was stated at paragraph 25:

” However, in paragraphs 24 to 28 of the judgment under appeal, the General Court held as follows:

24 It is appropriate to examine the word sign PHOTOS.COM as a whole.

According to settled case-law, the distinctiveness of trade marks composed of words and a typographical sign, such as that at issue in the present proceedings, may, in part, be assessed by examining each of its terms or elements, taken separately, but must in any event depend on an appraisal of the composite whole. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that in combination they cannot present a distinctive character (see [judgment of 12 December 2007 in Case T‑117/06 DeTeMedien v OHIM (suchen.de)], paragraph 31 and the case-law cited).

25 The parties agree on the fact that the word mark PHOTOS.COM, considered as a whole, reproduces the characteristic structure of a second-level domain name (“photos”) and a TLD [top level domain] (“com”), separated by a dot.

As the Board of Appeal pointed out, that mark has no additional features – in particular, graphic features – because the dot is typically used to separate the second level domain from the TLD.

26 Furthermore, the addition of the element “.com” to the word “photos”, which is descriptive and devoid of distinctive character, does not render the sign distinctive as a whole.

Trade marks manual

As the Board of Appeal pointed out, the distinctive part of a domain name is not the TLD, which is generic, but the second-level domain – which, in the present case, is devoid of distinctive character.

27 Additionally, it is important to note that, even if the registration of a sign as a Community mark is not conditional upon a finding of a certain level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark, the fact remains that – as the Board of Appeal found – there is no additional element to support the conclusion that the combination created by the commonplace and customary components “photos” and “.com” is unusual, fanciful or might have its own meaning, especially in the perception that the relevant public might have of the goods and services concerned (see, to that effect, [DeTeMedien v OHIM], paragraph 32).

28 Accordingly, in the absence of special characteristics peculiar to the sign at issue, the relevant public’s perception of that sign will be no different from its perception of the combination of the two words comprising the sign.

It follows that, as the Board of Appeal rightly pointed out, the relevant public will not be able to distinguish the goods and services covered by the trade mark application from goods and services of a different commercial origin. Consequently, the sign is devoid of distinctive character.”

The addition of ‘.com’ or ‘.co.uk’ to words which describe characteristics of the goods or services (as opposed to describing the generic name of the goods themselves), will usually be sufficient to bestow distinctive character upon the mark in totality.

For example, even though the phrase ‘Twist and Seal’ is itself likely to be objectionable for storage jars on the basis of it describing a characteristic of the goods (i.e. storage jars with a ‘twist and seal’ action), the addition of an URL suffix such as ‘.com’ is likely to give the resulting sign i.e.

‘www.twistandseal.com’ in its totality a trade mark character.

Top-level domain names introduced in 2014

To date, the average consumer has become familiar with a fairly restricted range of generic top-level domains (gTLDs), such as .com, .co.uk, .net and .org.

However, the body responsible for managing gTLDs - the Internet Corporation for Assigned Names and Numbers (Icann) - is increasing the choice of gTLDs to promote innovation. The first new suffixes opened for registration in January 2014, and Icann plans to facilitate a measured rollout of new domains. Accordingly, new gTLDs will be introduced steadily over time, and will include:

  • standard or Generic TLDs - these will include generic terms such as ‘.culture’, ‘.music’ and ‘.trusted’.
  • community TLDs - these will include gTLDs such as ‘.catholic’, and ‘.thai’
  • geographical TLDs - these will include, for example, ‘.nyc’, ‘.berlin’, and ‘.toyko’
  • brand TLDs - companies and organisations will be able to apply for their own TLDs using their trade marks, for example, ‘.unicef’, ‘.motorola’, ‘.hitachi’, and ‘.tesco’