The Trade Marks Regulations 2018 - Absolute Grounds of Refusal

Jane Lambert

This is the third of my articles on the changes to UK trade mark law brought about by the implementation of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks on 14 Jan 2019.  It is to be read in conjunction with The New Trade Marks Law which I published in NIPC Law on Saturday, 12 Jan 2019.

Art 4 (1) of the Directive lists signs that should not be registered as trade marks or, if registered, should be liable to be declared invalid:

"(a)  signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c)  trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;
(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;
(e) signs which consist exclusively of:

(i)  the shape, or another characteristic, which results from the nature of the goods themselves;
(ii)  the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii)  the shape, or another characteristic, which gives substantial value to the goods;

(f) trade marks which are contrary to public policy or to accepted principles of morality;
(g) trade marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service;
(h) trade marks which have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6ter of the Paris Convention;
(i) trade marks which are excluded from registration pursuant to Union legislation or the national law of the Member State concerned, or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications;
(j)  trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine;
(k)  trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialities guaranteed;
(l)  trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or the national law of the Member State concerned, or international agreements to which the Union or the Member State concerned is party, providing protection for plant variety rights, and which are in respect of plant varieties of the same or closely related species."

These are known as "absolute grounds of refusal."

There are rather more grounds in this list than in the previous directive.  The main changes are the substitution of the words in art 4 (1) (e) of the 2015 Directive for those in art 3 (1) (e) of the previous one and the addition of paragraphs (i) to (l) in the new directive.  These are implemented by reg 4 of The Trade Marks Regulations 2018:

"(1) Section 3 is amended as follows.
(2) In subsection (2), after “the shape” in each place insert “, or another characteristic,”.
(3) In subsection (4)(7), after “EU law” insert “other than law relating to trade marks”.
(4) After subsection (4), insert—

“(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 part
providing for the protection of plant variety rights.”

Those amendments have been incorporated into the Intellectual Property Office's unofficial consolidation of the Trade Marks Act 1994. 

The reason for reg 4 (2) is given in the first paragraph of section 2 of the guidance note Implementation of the EU Trade Mark Directive 2015:

"Marks which consist exclusively of shapes cannot be registered if the shape itself performs a purely technical function, adds value to the goods or results from the nature of the goods. This kind of prohibition has now been extended to cover not just shapes, but any characteristic which is intrinsic to the goods applied for. For example, 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 these provisions."

The reason for the other changes is  in paragraph (15) of the recitals:

"In order to ensure that the levels of protection afforded to geographical indications by Union legislation and national law are applied in a uniform and exhaustive manner in the examination of absolute and relative grounds for refusal throughout the Union, this Directive should include the same provisions in relation to geographical indications as contained in Regulation (EC) No 207/2009. Furthermore, it is appropriate to ensure that the scope of absolute grounds is extended to also cover protected traditional terms for wine and traditional specialties guaranteed."

There is nothing in the recitals on plant breeders' rights

Anyone wishing to discuss this article or trade marks generally should call me on 020 7404 5252 or send me a message through my contact page.  Finally, if anyone is curious about the photo, it was taken at the summit of the West Nab which is near Holmfirth in the Yorkshire Pennines. A beautiful spot  which I strongly recommend.

Auntie Jane's Trade Mark Tips: No. 6 - Some of the Things that can go wrong

Author Priwo
Source Wikipedia

Jane Lambert

There are all sorts of reasons why your application to register a mark might fail.

The official who examines your application ("the examiner") may consider that your mark falls within a number of statutory exclusions. For a start, the examiner may consider that the subject matter of your application is not even a trade mark, possibly because it is not a sign, or perhaps because it can't be expressed in writing or doesn't distinguish your goods and services from those of your competitors.

Even if it is a trade mark, the examiner may object to it on the grounds that it is not distinctive, that it is descriptive of the goods or services, or common to the trade. He or she may consider your proposed mark to be offensive or it may be too similar to a royal, national or other protected emblem. Those objections are called "absolute grounds for refusal" and are set out in sections 3 and 4 of the Trade Marks Act 1994.

Wherever possible, the examiner will give you an opportunity to overcome the objections. If you fail to take advantage of that opportunity or if the examiner believes that the objection cannot be overcome he or she may refuse your application.

If you think the examiner is wrong you can appeal against his decision to the Registrar of Trade Marks (that is to say the Comptroller or Chief Executive of the IPO). The Registrar will appoint an official called "a hearing officer" to consider your appeal. I have described the appeal procedure in "If the examiner says "no" - ex parte hearings in the Trade Marks Registry" 10 Aug 2015 NIPC London. That is where I or some other specialist intellectual property barrister can often help. We can advise you of your chances of success and, if necessary, represent you at the hearing before the hearing officer.

Even if the examiner has no objection to your application or you manage to overcome any objection that he or she raises, you may not be out of the woods. Someone else may object to your application and I will consider that problem next time.

Until then, I leave you with my case note on T-397/09 Prinz von Hannover v OHIM  [2011] EUECJ T-397/09  (Trade Marks: Prince Ernst August of Hanover and Brunswick etc v OHIM 6 June 2011 NIPC Law). Cheeky wasn't he!

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.