6 - Absolute grounds for refusal

Question 1

What is the definition of a trade mark?

Answer 1

A sign which is capable of:

• being represented in the register which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afford to the proprietor

and

• of distinguishing the good or services of one undertaking from those of other undertakings

Question 2

What does undertaking mean in the context of UKTMA?

Answer 2

“Business” or “trade”

Question 3

Who can apply for a UK trade mark?

Answer 3

An individual (natural person) or some sort of legal person, capable of owning property in their name.

Question 4

What are the absolute grounds for refusal under section 3(1)?

Answer 4

a. incapable of distinguishing the goods and services of one company from those of others

b. devoid of distinctive character

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

d. 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

Question 5

What are the absolute grounds for refusal under section 3(2)?

Answer 5

a. the shape or another characteristic which results from the nature of the goods themselves (natural)

b. the shape or another characteristic of goods which is necessary to obtain a technical result, (functional) or

c. the shape or another characteristic which gives substantial value to the goods (ornamental).

Question 6

What are the absolute ground for refusal under section 3(3)?

Answer 6

a. contrary to public policy or accepted principles of morality

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

Question 7

What are the absolute ground for refusal under section 3(4)?

Answer 7

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

Question 8

What are the absolute ground for refusal under section 3(6)?

Answer 8

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

Question 9

Are there any absolute grounds for refusal which apply in the UK but not in the EU?

Answer 9

Bad faith (UKTMA 3(6))

Question 10

What is acquired distinctiveness?

Answer 10

Acquired distinctiveness is the ability of a sign to be perceived by customers to be a
trade mark, as a result of the use of the sign being of sufficient magnitude such as to
have displaced any other significance or meaning.

Question 11

What objection can be overcome with evidence of acquired distinctiveness?

Answer 11

S3(1) b, c or d, if before the date of registration, the mark has acquired a distinctive character as a result of the use made of it.