7 - Relative grounds for refusal

Question 1

What are the ground for refusal under section 5(1)?

Answer 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.

Question 2

What are the ground for refusal under section 5(2)?

Answer 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, or

(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,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

Question 3

What are the ground for refusal under section 5(3)?

Answer 3

A trade mark which—
is identical with or similar to an earlier trade mark,
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.

Question 4

What are the ground for refusal under section 5(4)(a)?

Answer 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 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

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.

Question 5

What are the ground for refusal under section 5(4)(b)?

Answer 5

A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) above, in particular by virtue of the law of copyright.

Question 6

What does section 5(5) state?

Answer 6

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.

Question 7

What are the ground for refusal under section 5(6)?

Answer 7

Where an agent or representative (“R”) of the proprietor of a trade mark applies, without the proprietor’s consent, for the registration of the trade mark in R’s own name, the application is to be refused unless R justifies that action.

Question 8

What steps should be taken to assess similarity of marks?

Answer 8

1. Assess visual, aural and conceptual similarity
2. Assess similarity of goods
3. Identify average consumer
4. Assess likelihood of confusion (consider acquired distinctiveness)
5. Conclude

Question 9

What are the factors to consider when assessing similarity of goods / services?

Answer 9

Users
Nature
Purpose
Complementary / Competitive
Distribution Channel
Manufacturing
Overall