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Absolute Grounds for Refusal - Vocabulary Flashcards

Overview of Absolute Grounds for Refusal

  • Purpose: Analyze the ‘absolute’ grounds for refusing to register a trade mark under section 3 (and related sections) of the Trade Marks Act 1994.
  • Core idea: Absolute grounds relate to the sign itself rather than third-party rights; they protect public interests and the integrity of the register.
  • If a sign should have been refused on absolute grounds but is registered, any person may challenge validity later.
  • Three broad categories of absolute grounds (grouped for analytic purposes):
    1) Subject matter: whether the sign falls within the statutory definition of a trade mark (Sections 1(1), 3(1)(a) and (2)).
    2) Non-distinctive/descriptive/generic: whether marks are devoid of distinctive character, descriptive, or generic (Sections 3(1)(b)–(d)).
    3) Public policy, morality, deception, illegality, or bad faith: per Sections 3(3)–(6); includes specially protected emblems under Section 4.
  • The chapter also addresses provisions for specially protected emblems (Section 4).
  • Foundational questions the system should ask (five reasons for denying registration):
    • Not precisely defined or capable of the precise definition required for a property right. ext{sign and representation requirements under } s.1 ext{ and } s.3(1)(a).
    • Unlikely to function as a trade mark (not indicating commercial origin to consumers).
    • Granting rights would unduly limit competition.
    • The sign falls into a category that the system does not want to protect (immoral, deceptive, or context-limited uses like state emblems).
    • The applicant’s behaviour raises concerns (abuse/opportunistic use of the system).

1) Subject Matter: Sign falls within statutory definition (Section 3(1)(a))

  • Section 3(1)(a): A sign that does not satisfy the requirements of a trade mark as set out in Section 1(1)(a) is not registrable.
  • Practical obligations: determine if the candidate is sufficiently precise to be a sign and to satisfy the representation requirements; identify goods/services to bound the rights.
  • Shapes/characteristics are treated under the “special rules” in Section 3(2) (not revisited here as per content).

2) Non-distinctive Marks (Sections 3(1)(b)–(d))

  • Core idea: marks that are devoid of distinctive character, or purely descriptive, or generic, are not registrable.
  • Subsections comprise distinct but related prohibitions:
    • 3(1)(b): Devoid of any distinctive character.
    • 3(1)(c): Consist exclusively of signs or indications which may serve in trade to designate the kind, quality, intended purpose, value, geographical origin, time of production, or other characteristics of the goods or services.
    • 3(1)(d): Signs that have become customary in the current language or in the bona fide and established practices of the trade.
  • Distinctiveness can be intrinsic or acquired through use (acquired by use is covered under 3.5). Signs may be rejected cumulatively under multiple grounds (e.g., descriptive signs may also be considered lacking distinctiveness).
  • Important interpretive guidance from Court of Justice: assess grounds in light of the general public interest each ground serves; distinctions may reflect different underlying considerations.
  • Inherent vs acquired distinctiveness: acquired through use can overcome initial lack of inherent distinctiveness; see Kit Kat-style discussions in 3.5.
  • Inherent distinctiveness: a sign must be capable of indicating origin to the relevant class of consumers; testing is fact-intensive and case-specific; not a fixed rule.
  • Visual vs aural/perceptual impression: the tribunal evaluates the sign as a whole; parts may be descriptive or non-distinctive but a whole sign may still acquire distinctiveness if consumers view it as a trade origin badge.
  • Reference concept: the “badge of trade origin” standard; when assessing inherent distinctiveness, consider how the average consumer would perceive the sign in context of the specified goods/services.
  • Key illustration concepts:
    • Abbreviations can be descriptive (e.g., EUROLAMB -> European lamb) depending on consumer perception and actual usage.
    • A sign may be descriptive for some goods and not for others; if a sign is found descriptive for one group, it may be refused for that group but could be acceptable for another group if sufficiently distinct for that group.
  • Procedural notes on assessment:
    • Distinctiveness is tested as of the date of application.
    • If the sign is not distinctive for one or more goods/services, refuse for those goods/services only (if homogeneous groups exist, broader refusals may apply).
    • Evidence from prior registrations in the UK register has limited value for establishing distinctiveness in a new case.
    • Appeals over a purely factual distinctiveness determination are generally not possible; focus on legal questions on appeal.
  • Distinctiveness framework elements (three-fold):
    • (i) Assess the sign as applied for; (ii) consider the relevant goods/services; (iii) from the perspective of the average well-informed, observant, circumspect consumer.
  • Concepts explained with examples:
    • Inherent distinctive words (e.g., GOOGLE, IKEA) may be inherently distinctive; descriptive terms like DOUBLEMINT may be descriptive unless acquired distinctiveness via use
    • The “acquired distinctive character” concept: use can impart distinctive character to signs that are inherently descriptive or non-distinctive.

3) Descriptive Marks (Section 3(1)(c))

  • Function and availability: 3(1)(c) aims to prevent exclusive rights over descriptive or generic signs to keep them available for others; it also helps keep descriptive geographical names free for use by others.
  • General approach: to avoid objection under 3(1)(c), applicant must show the sign is not used or likely to be used descriptively for the relevant goods/services.
  • Extent of descriptiveness: some signs are clearly descriptive (e.g., TREAT for premium or high quality) while others are merely suggestive and may be registrable when they create a neologism through unusual variation (e.g., BABY DRY for nappies).
  • “Exclusively descriptive”: signs that as a whole are descriptive for the goods/services will be excluded; if a non-descriptive element is present and sufficiently prominent, the mark may still be registrable.
  • Futurity: the sign can be excluded if it is capable of designating the characteristics in the future ( Windsurfing Windsurfing case concept of futurity).
  • Multiple meanings: a sign can have descriptive meanings among others; if at least one meaning designates a characteristic of the goods, it may be excluded; however, the existence of another non-descriptive meaning is not itself decisive.
  • “May serve” concept and futurity: the sign must not merely refer to current characteristics but should not be capable of assuming the sign will eventually designate the relevant characteristics in question; casual or promotional phrases can still attract distinctiveness if they create a new impression.
  • Important case law illustrations:
    • Windsurfing v Attenberger (CHIEMSEE): preservation of descriptive signs to remain free for use; public interest in keeping certain signs available.
    • Baby Dry (Procter & Gamble v OHIM): combine elements to reveal distinctive character; not purely descriptive if the combination is sufficiently unusual.
    • Campina Melkunie v Benelux-Merkenbureau: mere combination of descriptive elements does not automatically yield a registrable neologism; need unusual variation.
  • Examples of categories under 3(1)(c):
    • (i) Kind, quality, or quantity
    • (ii) Intended purpose
    • (iii) Value
    • (iv) Geographical origin
    • (v) Time of production
    • (vi) Other characteristics
  • Special notes on scope across goods/services: if a term is descriptive for some goods but not others, assess per category; some signs can be descriptively in one class and registrable in another.
  • Non-descriptive elements can rescue a sign when they are prominent enough to divert attention away from the descriptive parts.
  • Words vs non-words: 3(1)(c) applies to all marks, including pictorial or three-dimensional forms, if they are descriptive of characteristics; shape marks can be descriptive as well depending on usage and perception.
  • Illustrative cases: OL E S, NEW-BORN BABY; BABY DRY; BIO-MILD; OFF-WHITE (colour in fashion contexts) – the assessment often hinges on whether the sign communicates a property of the goods or merely an aesthetic.
  • Practical implication: acquired distinctiveness through use can overcome descriptiveness, but the test depends on actual consumer perception and use; use of evidence such as consumer surveys may be considered (though not always decisive).

4) Customary and Generic Marks (Section 3(1)(d))

  • Core idea: marks that have become customary in current language or in established trade practices are not registrable because they cannot function to distinguish.
  • Underlying protective function: these signs should remain free for use by others; this grounds the public policy that marks must remain available as descriptors.
  • Distinctive public policy: the sign’s meaning is already developed by usage; its continued protection would unduly hinder competition or usage by other traders.
  • The scope of this ground includes generic terms and marks that have become customary in trade.
  • Contours of the ground: the section covers generic status and customary language; its interpretation includes contextual usage in trade and language.

5) Used Marks: Acquired Distinctiveness (Section 3(5) and related provisions)

  • The statutory proviso to Section 3 (and Section 47(1)) allows an otherwise non-distinctive sign to register if it has acquired distinctive character through use before the date of application, or if wrongly entered on the register but later acquires distinctiveness.
  • Distinguishing function vs protective function: for acquired distinctiveness, consumer perception is the litmus test; concerns about protecting third-party rights are less relevant here than ensuring consumers identify origin reliably.
  • The threshold question: what constitutes the claimed “distinctiveness”? It could be recognition and association; case law discusses reliance vs perception and the nature of evidence needed to establish acquired distinctiveness.
  • Evidence and tests: a mix of market share, intensity, breadth, time, investment in promotion, consumer surveys, and independent corroboration; modern practice increasingly incorporates online evidence (website traffic, social media analytics) as supportive data.
  • Hierarchy of evidence (as per Windsurfing):
    • (i) Use and market share
    • (ii) Geographic reach and longevity of use
    • (iii) Advertising expenditure and promotion related to the mark
    • (iv) Statements from trade associations
    • (v) Consumer surveys
  • End point test for acquired distinctiveness: do a significant proportion of the relevant class of consumers perceive the goods or services as originating from a particular undertaking because of the sign? The Court of Justice has stressed that there is no fixed percentage; the assessment depends on descriptiveness and the context.
  • Important quantitative references:
    • Windsurfing framework and the idea of a “significant proportion” of consumers (not necessarily a majority).
    • UK and EU authorities have accepted that a relatively small segment with high recognition can support acquired distinctiveness, especially where descriptive opposition is strong.
    • In some studies, recognition around 20–40% among a defined consumer base can be meaningful in certain contexts (subject to other evidence).
  • Displacement of original meaning: acquired distinctiveness may come with some persisting original meaning, but the new meaning must identify origin among the relevant class of persons.
  • Geographic scope: acquired distinctiveness must be demonstrated across the territory where the ground of objection existed; a localized geographic success is not always enough for a national grant.
  • Means of proving acquired distinctiveness:
    • (i) Evidence of use (time, volume, geography, path-to-use)
    • (ii) Advertising expenditure and promotional intensity tied to the mark before filing
    • (iii) Trade and professional associations’ statements
    • (iv) Consumer surveys; expert testimony may be used; reliance on general public data versus niche publications depends on the market
    • (v) Internet evidence (traffic, platform metadata) relevant to the time of filing
  • Key considerations: acquired distinctiveness requires more than mere familiarity; it must be the sign’s meaning as origin indicator in the relevant product category, not just a generic consumer recognition.
  • Displacement and end-point analysis: courts assess whether the new meaning has displaced the original meaning sufficiently so that consumers identify origin rather than the descriptive or generic meaning.

6) Other Absolute Grounds for Invalidity (Section 3(3)–(6)

  • Broad eclectic ground: marks may be refused if they conflict with public policy or morality, are likely to deceive the public, are prohibited by law, or the application was made in bad faith. Special emblems are treated separately under Section 4.

4) Public Policy and Morality (Section 3(3))

  • Two intertwined but distinct concepts:
    • Public policy: normative vision of legal order; prospective protection to prevent market distortions or illegality; protects societal interests and legal order.
    • Morality: judged against accepted principles of morality at the time of assessment; more context-sensitive; influenced by social norms, culture, and public sentiment.
  • Key considerations in applying these grounds:
    • There is a risk of chilling expressive or creative activity if the standard is too broad; requires empirical input where possible.
    • A balance with freedom of expression is recognized (especially in the context of artistic, cultural, or political expressions).
  • Notable tests and guidance:
    • Constantin Film v. EUIPO (case on vulgarity and misappropriation of a famous author’s name) illustrates the tension and the empirical approach to morality; also notes the importance of considering context and public reception.
    • The EUIPO and UK guidance emphasize considering social context, cultural diversity, and public sentiment; the safety of expression is a factor.
  • Practical examples: composite marks with criminal connotations or offensive associations; the public policy analysis may weigh the sign’s content against public law and societal values.
  • Public policy applied to broader intellectual property concerns, e.g., copyrights and other IP contexts when a mark’s protection would threaten the public domain or basic legal order.

4) Deceptive Marks (Section 3(3)(b))

  • A mark cannot be registered if it is of such a nature as to deceive the public as to the nature, quality, or geographical origin of the goods/services.
  • The standard is that there must be a real risk of deception; the assessment is made from the viewpoint of a reasonably well-informed and circumspect consumer.
  • Example: Elizabeth Emanuel v. Continental Shelf – the mark ELIZABETH EMANUEL was opposed on the basis that its use might deceive consumers into believing the designer was involved with the goods, but the Court found that the characteristics/quality remained with the owner and not the sign itself.
  • The deception standard is relatively high; assignment of a mark in itself does not automatically trigger deception unless there is a real risk or misleading indication that the sign denotes origin or endorsement.

4) Marks Prohibited by Law (Section 3(4))

  • Prohibition covers marks that would violate law (e.g., protected emblems, flags, or marks that would infringe protected symbols such as Red Cross emblems).
  • Examples include the illegality of using protected geographical indications or protected plant-variety names in certain contexts, or marks that would mislead about protected product designations or origin.

4) Bad Faith (Section 3(6))

  • A mark shall not be registered if the application is made in bad faith.
  • The core of bad faith: dishonest state of mind or intention; assessment on a case-by-case basis using all available evidence.
  • Two primary limbs often considered:
    • (i) Absent a legitimate commercial rationale for seeking protection (e.g., overbroad or unjustified claims) in light of the actual use or intended use of the mark; and
    • (ii) Abuses of relationships or attempts to secure protection to undermine third-party rights or to secure exclusive rights beyond the functions of a trade mark.
  • Illustrative cases and factors:
    • Lindt v. Hauswirth: registration pursued to block a rival with established rights; the court assessed objective indicia of bad faith such as the known use by a third party and the intent to frustrate that party’s business.
    • Sky v. SkyKick: bad faith found where broad software categories were claimed with no commercial rationales; subsequent case law recognized partial invalidation or narrowing of the specification as an appropriate remedy.
    • Hotel Cipriani v. Cipriani: bad faith considerations weighed; the court balanced legitimate business interests with goodwill and competitor rights.
    • Ajit Weekly Trade Mark: registration by a party aware of a Punjabi-language mark with strong recognition in another market; the court concluded bad faith due to awareness of third-party rights.
    • Lindt and similar cases highlight the need to distinguish between fair competition and attempts to secure residual goodwill or prevent others from continuing legitimate activity.
  • Guidelines for assessing bad faith:
    • Identify whether the applicant knew of a third-party’s rights or governing goodwill; whether the mark is being used to exploit a dispute or to block legitimate competition; and whether a legal or ethical duty was violated in the process of registration.
    • The decision-makers should evaluate the objective circumstances, not just the subjective feelings or intentions claimed by the applicant.

Special Emblems (Section 4)

  • Provides that marks containing specially protected emblems are excluded from registration under specific subsections.
  • Examples include symbols connected to the Crown (royal arms, crown, royal patronage), national flags (and any representations that could mislead or offend), international emblems, and Olympic symbols (controlled representations under the Olympic Symbol Protection Act).
  • The exclusions apply irrespective of use, and include considerations for the global protection of emblems and the public policy to prevent misuse of symbols of national or international significance.

Subject Matter/Assessment Toolkit and Key Concepts

  • The average consumer is a central reference point:
    • The relevant consumer is defined as reasonably well-informed, reasonably observant and circumspect; different sectors may require different levels of attentiveness.
    • For non-English language marks, understandings depend on the extent to which the language is recognized in the market and the usual ways marks are encountered by consumers.
  • Distinctiveness framework:
    • Inherent distinctiveness: intrinsic ability to distinguish origin without use-based evidence.
    • Acquired distinctiveness: distinctiveness arising through use; acquisition can be demonstrated through evidence such as market share, geographic reach, advertising; and consumer perception assessment.
  • Product-category-specific assessment: the sign is judged with respect to the specified goods/services; a sign may be distinctive for one category and not for another.
  • Departure from sector norms (the “departs significantly” test) is a key consideration for 3(1)(b)–(d) in shapes, colors, logos, and other complex marks; however, for some signs (like colours) the public policy interest in avoiding colour depletion can override strong distinctiveness expectations.
  • Visual framing and placement: for get-up/trade dress and three-dimensional marks, the placement or packaging context matters for perception as an origin indicator; excisions or combinations with other distinctive elements may be used to secure registrations where the base sign is not sufficiently distinctive on its own.
  • The role of evidence in acquired distinctiveness: use, promotional expenditure, geographic extent, consumer surveys; the evidence must be specific, reliable, and pre-date the application; the credibility of the evidence is crucial; online data is increasingly relevant.
  • Discretion and balance: trademark examination involves balancing the public interest in keeping signs available for use against the need to prevent consumer confusion; the public interest is sometimes expressed through broader policy concerns (e.g., protection of comity with other trade regimes, protection of public domain, and freedom of expression considerations).

Illustrative Case Highlights and Takeaways

  • Windsurfing Chiemsee v. Attenberger (CHIEMSEE): established the Court of Justice’s test for 3(1)(c) and the ‘availability’ public-interest function; emphasises preserving descriptive terms for public use and the need for a ‘real, current, or serious’ need to leave signs free.
  • Linde, Winward, Rado Watch (C-53/01, C-54/01, C-55/01): key precedents on inherent distinctiveness and comparative testing across sign types.
  • Baby Dry (Procter & Gamble v. OHIM) and Campina Melkunie v. Benelux-Merkenbureau: illustrate the nuanced boundary between descriptive signs and registrable marks where unusual linguistic or syntactic arrangements create a distinct mark.
  • Doublemint (Wrigley) and Philips v. Remington: discuss how meaning and use influence the acquisition of distinctiveness and the strength of descriptive content for non-traditional marks.
  • Ongoing developments: shapes and colours often face stricter scrutiny; the tests for shape marks can differ from those for word marks; the treatment of get-up and packaging can involve nuanced analyses of consumer behaviour and usage contexts.
  • Public policy and morality: Constantin Film v. EUIPO demonstrates balancing expressive rights and moral considerations; public policy remains a live consideration with a flexible approach reflecting social norms.
  • Bad faith jurisprudence (Koton, Sky Kick, Lindt, Hotel Cipriani, Ajit Weekly): underscores that the absence of a legitimate business rationale and/or the exploitation of relationships can render a registration invalid or subject to partial invalidation.

Key Formulas and Notation (LaTeX)

  • Distinctiveness and acquisition thresholds under Windsurfing framework:
    • The question is whether a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark. This is not fixed by a universal percentage; it depends on the sign’s descriptiveness and market context. ext{Significance}
      ot= ext{Fixed Percentage}; ext{proportion} o ext{depends on context}.
  • For descriptive content ranges, ranges such as 20\% \leq \text{recognition} \leq 40\% can be informative in certain contexts, but must be combined with other evidence and context.
  • Time horizons mentioned in case law for non-use vs acquired distinctiveness: typical non-use grace period: 5\text{ years} (for revocation) and considerations around continued registration during grace periods with evidence of actual use.
  • When describing categories: the sign’s scope can be evaluated per category of goods/services; if the ground applies to one category within a broad specification, a partial refusal may be appropriate.

Practical Implications for Practice

  • When advising on an application, evaluate early:
    • Whether the sign falls under 3(1)(a) (satisfies definition) or is likely to be refused under 3(1)(b)–(d) (non-distinctive or descriptive).
    • For 3(3)–(6) (public policy, morality, deception, illegality, bad faith): assess potential risks based on sign content, context, and applicant intent.
    • Whether the sign could function as a “get-up”/trade dress or a position mark and the potential for “depart significantly” from sector norms.
    • Whether the mark could acquire distinctiveness through use and what evidence would be needed (use data, advertising spend, consumer surveys, online data).
  • In dealing with complex or borderline forms (colours, shapes, or sound marks), consider whether the sign departs from sector norms, whether other forms of protection (e.g., design rights) might apply, and whether registration would unduly restrict others’ use of descriptors.
  • When advising on public policy or morality concerns, consider social context, potential impact on minority groups, and freedom of expression considerations; prepare to justify decisions with empirical or socio-legal reasoning.

Summary Takeaways

  • Absolute grounds are designed to prevent marks that would be unsuitable for a trade mark because they fail to function as a sign, or because protecting them would undermine public interests or competition.
  • The grounds are divided into three broad categories: sign-based definitional (subject matter), non-distinctive/descriptive/generic, and public-interest/illegality/bad-faith grounds, plus special emblem protections.
  • Acquiring distinctiveness through use is possible for marks that initially lack inherent distinctiveness, but requires robust evidence of consumer perception and a credible path to origin recognition across the relevant goods/services and geography.
  • Case law emphasizes context, consumer perception, and the balance between protecting brand rights and preserving public domain and fair competition."