Relative Grounds for Refusal (Notes from Intellectual Property Law Chapter)
Introduction
This note covers the chapter on Relative Grounds for Refusal under the UK Trade Marks regime (Trade Marks Act 1994), focusing on section 5 relative grounds. The material distinguishes two broad categories: (i) concerns with earlier trade marks and (ii) concerns with earlier rights. Relative grounds are opposition-based and may also support cancellation of a registered mark. The grounds mirror infringement provisions (sections 5(1)â(3) correspond to infringement provisions like 10(1)â(3)), creating a symmetry whereby the owner of an earlier mark can prevent a later mark from registering where its use would infringe the ownerâs rights. Relative grounds are largely paper-based, contrasting with infringement analyses that consider real-world use. The chapter also explains the advertising function of a mark and introduces concepts of reputation, due cause, and anti-dilution (dilution) concepts, which feed into sections beyond the classic likelihood of confusion. It concludes with discussion of unregistered marks, copyright, and design rights. 5(1)â5(3) relate to double identity, likelihood of confusion, and dilution/advertising-function concerns; 5(4) and related rules govern relative grounds in relation to earlier rights (unregistered marks, copyright, and agency issues).
Relative Grounds in Relation to Earlier Trade Marks
2 Relative Grounds in Relation to Earlier Trade Marks
The grounds apply where an applicant/proprietor is at a relative disadvantage because their sign conflicts with someone elseâs prior rights. They are divided into two categories: (i) earlier trade marks and (ii) earlier rights. The discussion below concentrates on the two main blocks: earlier trade marks (section 5(1)â(3)) and the related tests that determine registrability against an earlier mark.
2.1 Preliminary Questions
When considering sections 5(1)â5(3), three preliminary questions arise: (i) what is an âearlier trade markâ? (ii) does the opponent have a proper interest to challenge? and (iii) has the earlier mark been used?
2.1.1 What is an earlier trade mark?
In the UK, an âearlier trade markâ includes (i) earlier UK marks and (ii) earlier international marks designated UK. After 31 December 2020, EUTMs are generally excluded unless converted into comparable UK marks. The concept also includes earlier trade mark applications with priority over the questioned application and âwell-knownâ marks protected under the Paris Convention. The list of earlier marks includes: (i) registered British or international marks with priority dates earlier than the application; (ii) comparable marks (based on EUTMs or IRs designating the EU) under Schedule 2A; (iii) pre-31 December 2020 conversions from EUTMs/IRs with seniority claims; (iv) applications that would be an earlier trade mark when registered; (v) well-known marks.
2.1.2 Does the opponent have an appropriate interest on which to base a challenge?
Opposition or cancellation on relative grounds can be commenced only by a person who has a relevant interest in the earlier mark. The Registrar or third parties cannot object merely because the same or similar mark is registered for the same or similar goods. In opposition, only the proprietor of the earlier mark can sue; in cancellation, the proprietor or a licensee of the earlier mark (or an authorized user of a certification mark) may seek cancellation. This allows an earlier trade mark licensee to defend against a junior use that could infringe.
2.1.3 Has the earlier trade mark been used?
If the earlier mark was registered more than five years previously and the opposition is based on it, the applicant can demand evidence of use in the prior five years or proper non-use reasons. If the mark has not been used, or use is not shown within five years, opposition may still be considered (global appreciation approach) with fair/notional use assumed if non-use falls within the grace period. If the opponent has used the mark, that usage may be ignored in initial âpaperâ considerations for certain situations. The five-year use requirement is connected to the broader revocation risk: a mark may be revoked for non-use, so opposition should not be based on a non-using mark if the mark itself could be revoked.
2.2 Double Identity: Section 5(1)
The first relative ground prohibits registration if the later mark is identical to an earlier mark and the goods/services are identical. When identity is established, there is no need to prove confusion. The test asks three questions: (i) when are marks identical? (ii) when are the goods/services identical? (iii) can registration still be legitimate if the later mark would not adversely affect the functions of the earlier mark?
2.2.1 Are the marks identical?
The comparison is between the earlier mark as registered and the sign in the applicantâs application. Marks are considered as a whole; the same form and all elements are assessed. However, some cases stress a strict interpretation of identity. Yet the average consumer may overlook insignificant differences, so the global impression matters. Examples discuss cases like WEBSPHERE vs WEB-SPHERE where minor dash differences may be considered insignificant by the average consumer. The identity test is applied from the consumer's viewpoint; the broader question is whether the signs reproduce all elements without modification.
2.2.2 When are goods or services identical?
Goods/services must be identical to those protected by the earlier mark. Exceptions exist, such as if the identical terminology covers different Nice classes (e.g., robots in class 7 vs. 28) or in narrow instances where unauthorized third-party service providers (e.g., car repairs) create an indissociable link between the goods and services that could identify origin. If the earlier mark covers broader categories than the applicantâs goods, overlap may still render them identical for relative-ground purposes. Language of the specification may require interpretation using dictionaries, Nice classes, and context of use. The test also considers complementarity and the likelihood that consumers may view related or complementary goods/services as coming from the same source.
2.2.3 Registration of later mark will not adversely affect the functioning of the earlier mark
A big question is whether the later mark would harm the function of the earlier mark. The burden of proof on harm to functions is not fully settled. The Court has suggested (i) a possible presumption of harm in double identity but this is not universal, (ii) the presumption can be rebutted, and (iii) the doctrine of harm to functions may not apply where there is a long period of honest concurrent use (e.g., BudÄjovickĂ˝ Budvar v. Anheuser-Busch, Inc.). The Budvar decision is described as exceptional, indicating that a national authority may refuse a later mark if it would likely harm the origin function. The assessment remains fact-specific and many cases require evidence of actual or likely harm to the mark's function.
2.3 Confusing Similarities: Section 5(2)
This section applies when, beyond double identity, the marks are identical or similar and the goods/services are identical or similar, leading to confusion (including likelihood of association). Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer (Canon vs MGM) established that all relevant factors should be considered: the nature of goods/services, end-users, and whether they are in competition or are complementary; distribution channels matter as well. The interdependency principle (where some elements offset others) coexists with the cumulative approach (similarity of marks, similarity of goods, and likelihood of confusion). A sliding scale is used to describe similarity: strong/high, medium, weak/low. If similarity is weak, the analysis may move to the next step; if dissimilar, the test may end.
2.3.1 Similarity of marks
The Sabel v. Puma framework (global/overall comparison) remains central: marks should be compared as a whole from the average consumerâs perspective, focusing on dominant elements and considering perceptual similarities across visual, aural, and conceptual dimensions. In composite marks, the dominant textual elements often drive the assessment, though context matters. The Betty Boop case illustrates the role of conceptual similarity when a picture evokes the sign as a concept. The Medion deviation (Medion v. Thomson) recognizes that an element within a composite sign can retain independent distinctive role and thus affect similarity; Medion can apply if a component has an independent role within the later mark.
2.3.2 When are goods or services similar?
Canon-like tests evaluate factors such as nature, end-users, purpose, method of use, and distribution. Complementarity and âaesthetic complementarityâ can be decisive in some instances (e.g., shoes and bags; cosmetics and fashion). The Court recognizes that even dissimilar goods might be linked by similar branding if they are distributed together or marketed in a connected fashion. The âcomplementarityâ concept is nuanced and often contested; the Court allows that a markâs similarity might be established even if goods are not literally the same or directly related.
2.3.3 Likelihood of confusion
This is the crucial limb. It is a global assessment from the perspective of the average consumer, who is reasonably well-informed and circumspect, though sector-specific variations occur (e.g., car buyers vs. confectionery buyers). Public overlap, the risk to origin, and chances of association are central. The analysis addresses several sub-issues:
Standpoint of interpretation: who must be confused; the average consumer is the default.
The relevant public: overlapping markets and the scope of goods/services.
What must be confused: source/origin remains the core concept, but indirect or âpost-saleâ confusion can be relevant in particular contexts.
Likelihood as risk: the standard is not binary; a likely risk suffices; a substantial portion of the public may be predicted to be confused or to encounter confusion in practice.
How much confusion: use of a substantial proportion of the public is discussed in some cases, but European law often emphasizes the notional average consumer rather than real-world proportions.
Mere association: not of itself sufficient for confusion; the test includes likelihood of confusion, not merely association.
Initial interest confusion: advertising or surface-level confusion that occurs before the consumer commits to the purchase; allowed in some contexts but cannot be the sole basis for liability.
Post-sale confusion: confusion after purchase may be relevant in certain circumstances, particularly for damage to the markâs image or in the context of acquired distinctiveness.
Distinctiveness and repute: the strength of the earlier mark (inherent or acquired) and its repute affect the likelihood of confusion.
Public interest in availability: anticompetitive concerns (e.g., Adidas v. Marca Mode) about restricting freedom to use basic designs are considered; availability of terms for competitors is a factor.
Proof: evidence types (actual confusion, surveys, expert evidence) are debated; notional use assumptions apply when actual evidence is scarce. Surveys require permission and are costly; their probative value is contested. Intention can influence the outcome in infringement contexts, though in relative grounds it is usually one factor among many.
2.3.4 Questions of proof
The judge decides likelihood of confusion; not all cases rely on evidence of actual confusion. In infringement scenarios, actual confusion evidence is common; in registrability contexts, notional use and intuitive judgment often suffice. The register and registries should be mindful of Whitford guidelines for surveys; surveys are expensive and often have limited probative value. The ânotional and fair useâ principle also applies to relative grounds (i.e., you must assess the signs as they would be used in ordinary circumstances).
2.4 Protection of Non-origin Functions: Section 5(3)
This is not about confusion; it protects the advertising function, i.e., the image and reputation of a mark. Section 5(3) prevents use of a later mark where it would (i) take unfair advantage of, or (ii) be detrimental to, the distinctive character or repute of an earlier mark, and (iii) the use is without due cause. The protection includes dilution-like effects (blurring, tarnishment) and the prevention of free-riding on the goodwill of the earlier mark. The statute makes clear that 5(3) applies irrespective of whether the goods/services are similar; the prior markâs reputation is a threshold condition.
2.4.1 Reputation
To trigger 5(3), the earlier mark must have a reputation in the United Kingdom. General Motors v. Yplon provides guidance: reputation is a knowledge threshold; it requires that the mark be known by a significant part of the public concerned by the products/services. Reputation criteria include market share, intensity, geographical reach, duration of use, and investment by the proprietor. The test is quantitative at the initial stage, but qualitative aspects (brand image and consumer perception) become relevant when considering transfer or dilution across products. Reputation can exist in relation to the goods/services within the registration or in relation to the markâs use in a broader family context; a mark may acquire a reputation when used in a family of marks (e.g., Appleâs family of marks).
2.4.2 Link
Even when marks are identical or highly similar, a link must be established between the later mark and the earlier mark for 5(3) to bite. The link is the mental association that connects the later mark with the senior markâs image, reputation, or source. The link can be less stringent than the likelihood of confusion; even a weaker link may suffice if it is credible that the public will associate the later mark with the earlier one. The famous âatmosphericsâ concept (the image/connotations of a mark) plays a central role here, as does the notion that even vague or indirect associations can constitute a link under dilution-like analysis.
2.4.3 Unfair advantage
If a link exists, the court then assesses whether the later mark would unfairly take advantage of, or benefit from, the earlier markâs repute. This involves evaluating the strength of the earlier markâs reputation, the degree of similarity, and the proximity of the goods/services; even non-identical goods may transfer image where a strong link exists. The transfer of image may occur through promotion, advertising, sponsorships, or other contexts in which the earlier markâs meaning or prestige is associated with the later mark. The test also considers whether the junior user engages in âfree ridingâ on the senior mark, especially in advertising strategies that piggyback on the senior markâs image.
2.5 p. 1087 p p. 1088â1089 Due Cause
Once a reputation is established and a use would take unfair advantage or be detrimental, the onus shifts to the applicant to show the use would be done with due cause. The Court of Justice has developed a number of formulations to address due cause, including fair competition (Interflora) and subjective legitimate interests (e.g., Leidseplein Beheer). The four conditions for a fair-competition-based due cause include: (i) the advertiser offers an alternative to the goods/services associated with the reputed mark; (ii) the competing product is not a mere imitation; (iii) the use does not dilute or tarnish the mark; and (iv) the use does not adversely affect the functions of the mark. Due cause can be argued at both the registrability and infringement stages. The doctrine recognizes fair competition and legitimate interests (e.g., prior use as a trade name) as bases for due cause. The balance is to ensure competition and expression are not chilled; courts weigh interests, good faith, and proportionality.
Relative Grounds in Relation to Earlier Rights
3 Relative Grounds in Relation to Earlier Rights
In addition to conflicts with earlier trade marks, registrability can be blocked by other rights, notably the law of passing off, copyright, design rights, or other rights. The relative grounds in relation to earlier rights are found in sections 5(4)(a) and (b): (a) the use would be prevented by passing off or (b) by copyright/design rights. This section considers, in order, unregistered marks and relevant rights, copyright, and design rights, and agent-based registration concerns.
3.1 Unregistered Marks
Section 3(4)(a) provides that a trade mark shall not be registered if its use in the UK is liable to be prevented by any rule of law, particularly the law of passing off. The requisites of passing offâgoodwill, misrepresentation, and likely damageâmust be established by the opponent, and the right must exist before the application date. The relative grounds do not always require a likelihood of confusion; a passing-off claim may be separate, with the court considering goodwill and misrepresentation as the core. The Appointed Person has clarified that passing off and relative grounds are distinct: a likelihood of confusion under trade mark law is not the same as passing off.
3.2 Copyright, Design Right, and Registered Design Right
Section 5(4)(b) states that a mark shall not be registered where its use would be prevented by copyright/design rights. If a design is protected by copyright, the use of a device mark that copies that design cannot be registered without the copyright ownerâs consent. Examples include Karo Step Trade Mark (device mark cancellation due to copyright) and Oscar Trade Mark (Oscar statue silhouette); short words or invented terms generally lack copyright protection (unless there is more than a mere literary work). The provision recognizes that rights may restrict registration when other rights (copyright/design) dominate.
3.3 Unauthorized Registration by Agent
Section 3(4) also covers unauthorized registration by an agent or representative of the markâs proprietor in a Convention country. The proprietor must prove it is the owner in the country, that the applicant is or was its agent/representative, and that the application was not authorized. Courts may pierce corporate veils if necessary to reveal an agency relationship. The burden of proof includes showing bad faith, which can be easier to establish than a true agency relationship.
Conclusion: Practical Implications
Relative grounds in relation to earlier trade marks are paper-based and rely on the registration context rather than actual use, except where the mark has been used or there is a credible case for harm to functions.
The âdouble identityâ ground is strict: identical marks for identical goods are blocked by default, unless legitimate reasons exist (e.g., non-adverse effect on functions of the mark).
The likelihood of confusion and interdependent tests require careful assessment of marksâ similarity, goods/services similarity, and the target consumer public. The global/overall approach (Sabel) remains central, with the Medion deviation allowing independent distinctive elements to affect the assessment.
The advertising function (5(3)) introduces a distinct form of harm: dilution, tarnishment, and free-riding may block registrability even where confusion is unlikely. Reputation and balance of interests matter; due cause is a crucial defense and requires showing legitimate competition or other grounds for using the mark.
Relative grounds in relation to earlier rights add a gatekeeping role: passing off and copyright/design rights can block registration, and agency-related risk is addressed to deter exploitation of a principalâs rights via an agent.
Key Cases and Concepts (selected)
Sabel BV v. Puma, C-251/95: global/âaverage consumerâ approach; imperfect recollection; dominant features.
Canon v. MGM, C-39/97: factors for similarity of goods/services; end-users, competition vs. complementarity.
DC and dilution lineage: Intel v. CPM UK, C-252/07; Antartica v. OHIM; LâOrĂŠal v. Bellure; Interflora v. Marks & Spencer.
Medion v. Thomson: Medion test for components with independent distinctive role in composite marks.
Adidas v. Marca Mode; Adidas/Benelux v. Fitnessworld: debate on availability and the role of competition.
Interflora v. Marks & Spencer; Leidseplein Beheer v. Red Bull: due cause and balance of interests; fair competition and subjective reasons.
BudÄjovickĂ˝ Budvar v. Anheuser-Busch: exceptional concurrent use and harm to functions.
Notable Definitions and Formulas (LaTeX)
Relative grounds grounds: ext{section } 5(1) ext{â} 5(3); The three main tests under these subsections are: ext{Double Identity} o ext{ identical marks and identical goods/services}, ext{Likelihood of Confusion} o ext{ similar marks and relevant goods/services} , ext{Unfair Advantage/ Dilution} o ext{ reputation and misappropriation }.
For the reputation threshold in 5(3): ext{reputation}= ext{knowledge of the mark by a significant part of the public concerned}, with quantitative criteria such as market share, intensity, duration, and investment.
Dilution link test: ext{link}
ightarrow ext{the later mark would call the earlier mark to mind}, even when there is no likelihood of confusion. The factor set includes similarity of marks, similarity of goods/services, and strength of the earlier mark.Four conditions for due cause (Interflora-inspired): (i) offering an alternative, (ii) not a mere imitation, (iii) not diluting/tarnishing, (iv) not adversely affecting the functions of the mark.
If youâd like, I can tailor these notes to a particular exam format (e.g., outline-style bullet points, or a more narrative case-by-case synthesis) or expand any of the case summaries with additional details and key quotes.