The news headlines are becoming ever more populated with stories of big brands trying and failing in some instances to register a trade mark for their product. Lindt infamously failed to register their signature gold foiled chocolate bunny in Germany, similarly Rubiks lost its bid to register the EU trademark for the puzzle. The latest addition to this string of companies was Nestlé who attempted and failed to register the KitKat design. Nestlé’s application for trade mark registration failed on the ground that the four finger chocolate bar design was not distinctive enough. This raises the question in the world of intellectual property law as to just what will surpass the trade mark test, and indeed what this test consists of within the UK.
For many years, the UK applied a tripartite test for applications made to the trade mark registry, if the mark failed any of the tests then the registration failed. The three-stage test consisted of three questions, namely;
- Whether the mark was capable of being a trade mark within the s1(1) definition;
- Whether, if it was, it should be refused registration under any of the absolute grounds under s3 of the Trade Mark Act 1994 (including the law on passing off) and;
- Whether it should be refused registration for any of the relative grounds in s5 of the Trade Mark Act 1994.
This system worked rather harmoniously, however problems ensued with the exponential growth of the Community Trade Mark system. Widely speaking, the general rule throughout many EU counties is that it is for others to object to the trade mark themselves, as opposed to the registrars undertaking searches.
The UK has since adopted a like technique, in that the UK trade mark system is reliant upon objections, namely relative grounds for refusal. The mark however must first surpass the stage of absolute grounds for refusal.
The absolute grounds for refusal are contained within s3 of the Trade Marks Act 1993. Under s3(1) the following shall not be registered;
- Signs which do not satisfy the requirements of section 1(1);
- Trade marks that are devoid of distinctive character;
- Trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
- Trade marks that consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
A few common grounds for refusing registration of a trade mark, are when it involves;
- The use of names of individuals or businesses;
- Aspects of the goods or services on offer; and
- Geographical origins of the goods or services.
Relative grounds for refusal arise when there is a conflict with the trademark an individual or a company is attempting to register and a trade mark which already exists which is either identical or similar. The relative grounds for refusal are identified under s5 of the Trade Mark Act 1994. To avoid a trade mark being refused registration it is highly advisable to undertake a search. As trade marks are registered to a specific type of good or service, the starting point is always to search for the proposed trade mark within the relevant class
The relative grounds differ on whether the trade mark is identical or similar and whether the goods/ services it is applied to are identical or similar.
If, the goods/services are identical and the trade mark is held as identical then no proof of confusion is needed (S 5(1)), but if the trade mark is only held as similar then proof of confusion is required (s 5(2)(b)).
Whereas, if the goods/ services are similar and the trade mark is held as identical then evidence of a likelihood of confusion is needed (s 5(2)(a)), this is the same if the trade mark is held as only similar.
There are many benefits that can arise from a company registering a trade mark whether this is in relation to their products and/or services or their company name. Although, the test for registration can seem of a high caliber, once surpassed the benefits can quickly outweigh any detriment. A registered trade mark grants on the owner an exclusive possession, this makes it significantly easier for a company to bring an action for a trademark infringement and thus it can act as a strong deterrent for those producing counterfeits.