Legislation of each country establishes its own grounds for refusal of a trademark. In many countries there are similar grounds for refusal, but success registration of a sign in one country is not guarantee of trademark registration in another country.
In this article we consider most common grounds for trademark refusal in Ukraine.
1. Likelihood of confusion means that it can not be registered a sign that is similar with a sign that was earlier filed for registration. This rule applies only for related goods or servises. Concerning to this ground for refusal trademark eximiner check similarity in sound, appearance and meaning.
To avoid rejection of registration we recommend to conduct a preliminary search before the trademark registration. More over, we advice to pay attention to list of goods or services in application.
The way to overcome trademark refusal is to show that there is no conflict between trademark's applicant and earlier filled trademark and that conflict can not appear in future. Sometimes it is possible to obtain a trademark registration by reduction of the list of good or services. Undoubtedly, during the preparation of arguments for overcoming refusal it is important to analyze all aspects concerning trademarks and attitude of average consumers to them.
In some countries, for example in Russian Federation, it is possible to overcome provisional refusal by providing Letter of Consent of applicant of earlier filed trademark. Unfortunately, the similar path of solutions is impossible in Ukraine.
By the way, it can not be registered a sign that is similar with:
- well-known trademarks;
- commercial names known in Ukraine concerning related goods or services;
- geographical indications. Actually these indications are protected by special ligislation.
2. Lack of distinctiveness
As the trademark is a sign that distinguishes goods or services of one person from another, that's why it should be distinctive. Hense, a sign that doesn't have distinctiveness cannot be registered.
Examples of signs that are not distinctive:
- signs consist from one letter or figure. Exception — signs consist of one letter or figure executed in original manner;
- signs consist of simple geometric shapes;
- realistic images of products;
- well-known abbreviation.
A sign can get distinctiveness by long-term exploitation. In this case to overcome provisional refusal it is possible to show such evidences:
- references about sales of products or goods;
- marketing and advertising expences;
- documents that sertify consumer association of a sign with an applicant;
- documents that sertify participation in exhibitions;
- diplomas, awards;
- other documents.
Main goal of all these documents is sertify that an applied sign is associated only with applicant and thereby evidence that a sign get distinctiveness.
Analysing Ukrainian practice, we must admit that in many cases in contrast to device and combines signs. The verbal signs more often may be deemed not distinctive.
3. Descriptive signs also are not registrable.
Desciptive signs are signs that identify type, quality, quantity, properties, composition, place or time of manufacture goods or providing services. For instance, «the best toy» for toys, «very good taxi» for taxi services. In case, if a sign consists of elements that describe not directly, but in a way of some associations, it may be deemed registrable. For example, «northern» for nutritive ice.
4. Misleading signs mean signs that suggest an incorrect statement for average consumer, namely about type, place, time, quality or manufacture of goods or provider of services. These signs can not be also registered. In some cases distributors try to register trademark of well-known manufactor of goods. Also these signs are not registrable.
5. Similarity of third partie's industrial designs, names of famous literary, artistic, scientifical works, quotes and charasters, names, surnames, pseudonyms of famous people in Ukraine.
These signs may be registered only by authorisation of holder of copyrights or famous people.
6. Imitation of state flags, official names of states, emblems and names of international organisations.
According to Ukrainian legislation these elements may be concluded to a sign with autorisation of competent authority. In Ukraine such authorisation concerning inclusion into a sign official names of Ukraine may be issued by Commision concerning adjustment questions about inclusion into a sign official name of Ukraine. What is more, it is required additional fee for filling application with a sign included official name of Ukraine. But payment of additional fee is not guarantee of granting decision of registration. To obtain such authorisation your sign should satisfy requirement established by special legislation.
Remains an open question about receiving authorisation of organisation of other states. In effect, main problem is that sometimes it is diffucult to understand for applicant what organisation is competent for giving an authorisation in other countries. Also it is difficult to obtain such authorisaion during two or three months (depending on type of filling procudure — national or under Madrid System) provided by trademark law. This term could be extended for six months, but it is possible to obtain authorisation during such terms not in all cases.
7. Contrary to public order, principles of humanity and morality.
Very often applicants do not pay attention to this ground for refusal. But as for me, it is very controversial and subjective ground.
A sign contradicts public order, principles of humanity and morality, if it, for example, consists of symbols of church, names of saint persons, images of historic and cultural monuments, offencive words. According to the Rules of conclusion and examination of trademark application an exeminer decides if a sign belongs to a sign of pornografic charakter, doens't consist slogans against state, symbols of extremists organisation. More over, in 2012 many signs were rejected in registration because were concluded such elements as «2012», «UEFA» or other signs concerning EURO 2012. According to the meaning of exeminers inclusion such elements in to a sign contradicts the public order.
Speaking about grounds of trademark refusal we must mentioned that in some cases these refusals can be overcomed. Main principle of overcoming refusal is providing forceful arguments showed the opposite.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
