Telling People What You Do! – Absolute Grounds Refusals in UK Trade Mark Law

8th February 2022 Intellectual Property

In the internet age, most businesses understand that much of their long-term value rests within their intellectual property portfolio. Of these assets, brands are often the most prized, as they encompass the entire business rather than being limited to a particular arm or product line.

This is why all businesses should apply to register and secure their trade marks, for all of their brands and sub-brands.

When you apply to register a trade mark with the UK Intellectual Property Office, it goes through a two-stage process. The first part of this process is called examination, and the second part is known as the opposition or publication period.

During examination, an examiner at the UKIPO is tasked with vetting applications for trade marks that should not enter the register, essentially because they are not capable of acting as trade marks.

Not every brand, or slogan, can be registered as a trade mark. There are some basic requirements. These are called the absolute grounds of refusal, and are contained within section 3 of the Trade Marks Act 1994.

Most commonly seen among these are section 3(1)(b) and (c), the former of which prohibits trade marks “devoid of distinctive character” and the latter which prohibits trade marks which serve exclusively to describe any characteristic of the goods or services sold under the mark.

This is the snag that many (particularly unrepresented) brand owners encounter when they try to register their brands as trade marks. The policy exists in order to prevent what we call descriptive terms from entering the trade marks register, so that other traders are not prevented from using these terms to describe what they do.

For example, if someone were to be granted a trade mark for the term “Laptop Computers UK”, they could technically seek to file trade mark infringement claims against any other traders looking to sell these products (and describe them to the public in doing so).

However, policy aside, cases in reality are not so simple, and sometimes trade marks applications can tread the line of absolute grounds refusals quite finely. Enter JMW’s IP team, who specialise in complex appeals against UKIPO absolute grounds refusals.

The team recognises that there is always a temptation, especially for new entrants into the market, to come up with a brand that immediately resonates meaning and denotes the particular product or services, to consumers. In addition, if businesses have traded successfully under a descriptive brand for several years, they are unlikely to want to change at a later stage.

A couple of examples of UKIPO decisions that have been overturned by JMW’s team are below:

Firstly, the case of THE RESILIENT HAIRDRESSER. This was an application for the word mark in relation to vocational training and career counselling. The UKIPO first decided that the mark exclusively referred to the services that would be provided under it. However, on appeal, the team argued that there were several services in the application that made no reference to hairdressing (the specification had been drafted tactically). The appeal was successful and the mark proceeded to registration.

Second, we recently had the case of LAMODA, a word mark filed in relation to clothing, shoes and leather goods. The UKIPO refused this application on the basis that the mark translated to the word “Fashion” in Spanish. However, again the team were able to have this decision overturned, arguing among other things that there were not enough Spanish speakers in the UK to understand that term.

Obtaining an arguably descriptive trade mark can be a challenge, but once granted they usually serve to be very attractive and valuable assets, as they are desirable to other traders.

If you have a brand that you think might be descriptive, give the IP team at JMW a call. We will be able to ensure that we come up with a sound strategy to protect your brand, and indeed a refusal from the UKIPO is not the end of the road as you might think it to be.

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Lakmal Walawage is a Senior Associate located in Londonin our Intellectual Property department

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