S.3 of the Trade Marks Act 1994 lays down the absolute grounds for refusal of registration of a trade mark. These grounds include marks and signs which do not satisfy the requirements of s.1(1) of the Trade Marks Act 1994 (TMA), including trade marks which are devoid of distinctive character, trade marks which designate the kind, quality, quantity, purpose, geographical origin intended purpose, value etc in the course of trade and trade marks which have become customary in the course of trade.
However, it is possible to register a trade mark which does not adhere to the above grounds.
Where a trade marks is already known in the trade or to the public, it would be unfair to deprive its proprietor of their right to protect the unregistered mark.
Where a trade mark is publically recognised, a lack of distinction (required for s.(1) of the TMA) can be overcome by use of the Mark to the extent that it builds a reputation and goodwill in the public domain and becomes well known to the general public.
If it can be proved that distinctiveness has been acquired through the prolonged use of the mark then the mark can be registered.
An example of a mark which did not adhere to the above absolute grounds was the “York” trailer trade mark. This mark would normally have had geographical objections. But because of its reputation due to years of use it overcame the s.3 absolute grounds.
A further example of a mark which did not adhere to the s.3 absolute grounds is the Coca Cola bottle shape. The bottle shape was universally associated with Coca Cola through its years of use and therefore overcame the absolute grounds for refusal for lack of distinctiveness.
The usual required period of use is 5 years or registration will not be considered.
To register a mark refused under s.3 the proprietor must first send to the Trade Mark Office evidence of turnover, advertising spend and length of use of the mark. This must be sent in the form of a statutory declaration. A decision as to whether the mark will be registered will be made on the evidence provided.
Michael can be contacted via email on michael@trademarkroom.com.