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| Jane Lambert |
In Registering a Trade Mark in the UK, I introduced readers to absolute and relative grounds for refusing an application to register a trade mark. An application may be refused on absolute grounds if the proposed mark is inherently unsuitable for registration. I discussed those grounds in Absolute Grounds for Refusal. An application may be refused on relative grounds if the proposed mark is too similar to a mark that has already been registered or if the use of the mark can be restricted by the law of passing off or some other cause of action. I shall discuss those grounds in more detail here.
Relative Grounds
These are set out in the following provisions s.5 of the Trade Marks Act 1994:(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
(2) A trade mark shall not be registered if because—(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, orthere exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
(3) A trade mark which—(a) is identical with or similar to an earlier trade mark, and(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom ... and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
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(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented—(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, where the condition in subsection (4A) is met,A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an 'earlier right' in relation to the trade mark.
(aa) by virtue of ... any enactment or rule of law, providing for protection of designations of origin or geographical indications, where the condition in subsection (4B) is met, or
(b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) or (aa) above, in particular by virtue of the law of copyright or the law relating to industrial property rights.
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(5) Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration."
The remaining provisions of s.5 and s.5A to s.8 supplement the above provisions. The wording of subsections (1), (2) and (3) of s.5 is identical to that of subsections (1), (2) and (3) of s.10.
Consent
S.5 (5)
Identical Signs and Identical Goods or Services
In easyGroup Ltd v Nuclei Ltd and others [2023] EWCA Civ 1247, [2024] FSR 9, Lord Justice Arnold said at para [48]:
"The case law of the CJEU shows that, in order to establish infringement under section 10 (1) of the 1994 Act and Article 9 (2) (a) of the EUTM Regulation, six conditions must be satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is identical to the trade mark; (v) it must be in relation to goods or services which are identical to those for which the trade mark is registered; and (vi) it must affect, or be liable to affect, one of the functions of the trade mark."
Because the wording of s.5 (1) is identical to that of s.10 (1), it follows that anyone objecting to the registration of a mark under s.5 (1) must also satisfy those 6 conditions.
Identical or Similar Signs for Identical or Similar Goods or ServicesLord Justice Arnold listed the conditions that must be satisfied to establish infringement under s.10 (2) of the 1994 Act at para [74] of easyGroup Ltd v Nuclei Ltd and others:
"(i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public."
As the language of s.10 (2) is identical to s.5 (2), it follows that those conditions apply to objections to registration under s.5 (2).
The condition that often gives rise to contention is condition (vi): Does the use of a sign by a third party within the relevant territory give rise to a likelihood of confusion on the part of the public? As to that condition, Lord Justice Arnold said in para [75] of easyGroup:
"In order to try to ensure consistency of decision making, a standard summary of the principles established by these authorities, expressed in terms referable to the registration context, has been adopted in this jurisdiction. The current version of this summary is as follows:'(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.'"
This summary has been compiled by the Intellectual Property Office's hearing officers from decisions of the Court of Justice of the European Union over many years. Hearing officers apply those principles regularly in opposition or invalidity proceedings in the Trade Marks Registry, but, as Lord Justice Arnold noted, they apply equally to infringement proceedings in the courts.
Unfair advantage or Detriment to the Distinctive Character or Repute of the Trade MarkA comparison of s.3 when originally enacted with the section as it is now shows that the words "and .... is used in relation to goods or services which are not similar to those for which the trade mark is registered" have been deleted. The words "in relation to goods or services" have been inserted between "trade" and "a sign". A new subsection (3A) has been added which provides:
"subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered."
These changes have been made by The Trade Marks (Proof of Use, etc.) Regulations 2004 (SI 2004 No 945) which implement the decisions of the CJEU in Case C-292/00 Davidoff & Cie and Zino Davidoff and Case C-408/01 Adidas-Salomon AG and another v Fitnessworld Trading Ltd. [2004] CEC 3, [2003] ECR I-2537, [2003] EUECJ C-408/1, [2004] 1 CMLR 14, [2003] ECR I-12537, [2004] Ch 120, [2004] 2 WLR 1095, [2004] ETMR 10, [2004] FSR 21, [2003] EUECJ C-408/01.
In Match Group, LLC and others v Muzmatch Ltd and another [2023] WLR(D) 199, [2023] 4 All ER 190, [2023] EWCA Civ 454, [2023] Bus LR 1097, [2023] FSR 18, Lord Justice Arnold said at para [55]:
"A proprietor of a registered trade mark alleging infringement under Article 9 (2) (c) of the EUTM Regulation, Article 10 (2) (c) of Directive 2015/2436 and section 10 (3) of the 1994 Act must show that the following requirements are satisfied: (i) the registered trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party in the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor; (v) it must be of a sign which is identical with or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark, or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause."
Again, as the wording of s.5 (3) is identical to that of s.10 (3), anyone objecting to the registration of a trade mark under s.5 (3) must satisfy the above 9 conditions.
Earlier Right
A comparison of s.5 (4) as it stands with the subsection as enacted shows that a new paragraph (aa) has been inserted between paragraphs (a) and (b) of subsection (4), and new subsections (4A) and (4B) have been added. Paragraph (aa) read in context provides as follows:
["A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented—]
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(aa) by virtue of ... any enactment or rule of law, providing for protection of designations of origin or geographical indications, where the condition in subsection (4B) is met, ...."
Subsection (4B) complements paragraph (aa):
"The condition mentioned in subsection 4 (aa) is that—
(a) an application for a designation of origin or a geographical indication has been submitted prior to the date of application for registration of the trade mark or the date of the priority claimed for that application, and
(b) the designation of origin or (as the case may be) geographical indication is subsequently registered."
Subsection (4A) complements paragraph (a) of subsection 5 (4):
"The condition mentioned in subsection (4) (a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application."It follows that an application to register a trade mark can be opposed or challenged in invalidity proceedings on the ground that its use in the United Kingdom can be prevented by an action for passing off, by laws providing for the protection of geographical indications or designations of origin, or by copyright or other industrial property rights. In Re WILD CHILD trade mark, Rajan Imports Ltd. v Pinwise Ltd. [1998] 2 WLUK 315 | [1998] R.P.C. 455, BL 0/306/98 17 Feb 1998, the Appointed Person held that the elements of the right of action relied upon for the opposition or challenge hae to be established if the objection is to succeed even though the evidence may be in writing and considerably less voluminous than the materials that would be placed before a court.
Consent
S.5 (5) provides that nothing in the section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.
This resource page is very much a work in progress, which will be revised and updated periodically. Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page at any time.
Jane Lambert Trade Mark Resources 21 Jan 2026 Updated 1 Mar 2026
Jane Lambert Registering a Trade Mark in the UK 18 Jan 2026
Jane Lambert Absolute Grounds for Refusal 22 Feb 2026 Updated 18 April 2026
Jane Lambert Passing off 1 Dec 2016
Jane Lambert Geographical Indications in the UK after 31 Dec 2020 30 Sept 2020 NIPC Law
