(1) The Absolute Grounds for Refusal
An Examiner will assess whether your proposed trade mark has sufficient distinctive qualities so as to function as a trade mark, i.e. that it distinguishes the goods /services which you offer from those of your competitor(s).
YOUR MARK WILL BE REFUSED BY THE EXAMINER IF IT IS NOT DISTINCTIVE.
Marks which fall foul of the distinctiveness requirement are marks which are generic or lack any imaginative thought or marks which indicate the kind, quality, quantity, intended purpose, geographical location or time of production.
Words, logos or other forms of indicators which have become customary language within your marketplace and are being commonly referred to by your competitors will also fail under this section of the Act.
A trade mark search will assess the distinctive character of your proposed trade mark against the products or services to which it will be applied.
(2) The Relative Grounds for Refusal
An Examiner will conduct their own trade mark search against your mark to identify any existing identical or similar registered or pending trade marks which may be cited against your proposed trade mark.
The Examiner at the Registry may notify owners of similar or identical trade marks.
The owners of these marks will then be given the opportunity to oppose the application during what is known as the ‘publication stage’ of the application process.
Therefore, it will be for the holder of the earlier mark to seek to block the application if they so wish. This is intended to ensure that applications will only be blocked where they affect others’ trading interests.
The length of the publication stage differs depending on which territory your mark is filed in.
In the UK the publication stage lasts for two months
In the EC the publication stage for three months
If your mark is filed in the UK, the Examiner will notify the owners of earlier UK marks automatically and any owners of EC marks where they have opted-in to the notification service.
If your mark is filed in the EC, the Examiner will only notify the owners of EC marks.
Please note that the Examiner will not investigate the business activities of either you or any registered trade mark owner and will only look at the classification descriptions to determine any similarity of goods /service.
Our search will take into consideration the similarity of the marks and the goods and or services and assess whether an opposition will be raised based on the basis that there exists a likelihood of confusion on the part of the relevant public.
Trade mark law also protects marks with reputation where a proposed mark would take unfair advantage or be detrimental to the distinctive character of the earlier mark. This will apply even if the products are dissimilar.
In the US, the process differs to the UK and EC trade mark application process.
If the examining attorney determines that there is a likelihood of confusion between your mark and an already registered mark then he or she will refuse your application.
Furthermore, the owners of any similar marks may also raise an opposition against your mark should it proceed to the publication stage (which lasts for a period of 30 days) if it feels that its brand may be damaged by your mark, and if it is actively monitoring the US Patent Office trade mark Gazette (where your trade mark application will be published).