Chapter 7: Relative Grounds for Refusal of a Trademark

Document Cited in Related
LibraryIntellectual Property
Pages69-77
AuthorJames Griffin,Jane Ying,Abhilash Nair
7.1: Introduction

  1. The relative grounds are the grounds on which the application of the registration of the trademark can be barred by the UK Registry in addition to the absolute grounds.

  2. The application for the registration of a trade mark can be barred if there are any conflicts with:

    earlier registered marks; or

    • earlier rights to an unregistered mark.

  3. earlier registered marks; or

  4. earlier rights to an unregistered mark.

  5. The UK registry will ex officio search for both earlier trade marks and earlier rights which are similar to the mark applied for, and then compare them to find out whether there are any conflicts between them. If so, the UK registry can refuse the later application.

 27.2: Earlier Marks

  1. ‘Earlier marks’ includes:

    an earlier UK or international registration (s6(1)(a));

    • a Community registration (s6(1)(a));

    • an earlier application any of the above (s6(2));

    • a later Community mark based on the earlier UK or international registration (s6(1)(b)); and

    • an earlier ‘well-known’ mark within the meaning of Article 6bis of the Paris Convention (s6(1)(c)).

  2. an earlier UK or international registration (s6(1)(a));

  3. a Community registration (s6(1)(a));

  4. an earlier application any of the above (s6(2));

  5. a later Community mark based on the earlier UK or international registration (s6(1)(b)); and

  6. an earlier ‘well-known’ mark within the meaning of Article 6bis of the Paris Convention (s6(1)(c)).

7.2.1: Types of Earlier Trade Marks

  1. TMA 1994 divides the earlier trade marks into three types:

    identical marks and goods or service (s5(1));

    • identical marks for similar goods or service or similar marks for identical or similar goods or services (s5(2));

    • identical marks for non-similar goods or services (s5(3)).

  2. identical marks and goods or service (s5(1));

  3. identical marks for similar goods or service or similar marks for identical or similar goods or services (s5(2));

  4. identical marks for non-similar goods or services (s5(3)).

 7.2.2: Identical Marks for Identical Goods or Services

  1. In accordance with s5(1), both the marks being compared and the goods or services for which the marks are used are identical. The confusion of the identity of marks and goods or services is assumed.

  2. Identical sign requires an examination of what actually appears on the register – see Philips Electronics NV v Remington Consumer Products (1998). If the registered mark consists of a word, the typeface or style of lettering is irrelevant (Bravado Merchandising v Mainstream Publishing (1996)).

  3. The ECJ has held that the test for the identical sign is that a sign is identical with the earlier trade mark where it produces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer (LTJ Diffusion SA v Sadas Vertbaudet SA (2003)).

  4. Two marks will be ‘identical’ where:

    there is only minimis difference between two marks, for example ‘Origin’ and ‘Origins’; or

    • part of the mark is identical and both of the marks are used with associated matters. For example, the mark ‘Robertson’s Toffee Treat’ was deemed identical to the mark ‘Treat’ used with the well-known mark ‘Silver Spoon’ (British Sugar v James Robertson (1996)).

  5. there is only minimis difference between two marks, for example ‘Origin’ and ‘Origins’; or

  6. part of the mark is identical and both of the marks are used with associated matters. For example, the mark ‘Robertson’s Toffee Treat’ was deemed identical to the mark ‘Treat’ used with the well-known mark ‘Silver Spoon’ (British Sugar v James Robertson (1996)).

 7.2.3: Identical Marks for Similar Goods or Services

  1. Similar...

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