Trade marks – Relative Grounds for Refusal explained.
There are two grounds under which a trade mark may be refused, these are known as Absolute (covered by Section 3 of the Trade Marks Act 1994) and Relative Grounds (covered by section 5 of the Trade Marks Act 1994) and explained below:
The Law
The relative grounds for refusal of a trade mark are given under Section 5 of the Trade Marks Act 1994. Essentially relative grounds for refusal occur when the mark that an undertaking applies for is already in use by an earlier sign or a similar earlier sign. Before explaining the above in greater detail, it is important to firstly define what is meant by ‘earlier sign’.
Earlier Sign
When judging relative grounds for refusal a comparison is made to the earlier mark. Under Section 6 of the Trade Marks Act 1994 ‘earlier mark’ is defined as:
A trade mark that has been registered in the UK, whether it is a UK national trade mark or a community trade mark or an international trade mark that has the UK as a designated territory and has an earlier date of application for the trade mark.
The three points to note
1. Where the sign is identical to an earlier sign and the goods and/or services applied for are also identical.
Section 5(1) of the Trade Marks Act 1994, makes it clear that this provision is strictly for situations where the sign being used is identical and the goods or services that are being sold under the sign are also identical. The European Court of Justice holds that the test for identical signs requires that the sign reproduces all elements of the registered trade mark without any modification or addition.
Having established that the sign is identical to the trade mark then the goods or services will be assessed. If they are also identical to the goods or services which are sold under the registered trade mark then they will be caught by Section 5(1) and the mark is likely to be refused.
2. Where the sign is identical to an earlier sign and the goods and/or services are similar.
If the goods or services are not identical but the sign is still identical to the trade mark then Section 5(2)a of the Trade Marks Act 1994 may be relevant. This holds that if the goods or services are similar then there may still be grounds for refusal. As a general rule if the goods or services are sold in the same market as those sold under the registered trade mark they will be considered similar goods.
3. Where the sign is similar to an earlier sign and the goods and/or services applied for are identical or similar.
As well as looking at similar goods or services for identical trade marks, Section 5(2) also considers the case of similar trade marks. Section 5(2)b of the Trade Marks Act 1994 states that a trade mark shall be refused registration if it is similar to an earlier trade mark and is to be use for similar goods or services.