Real Examples of Acceptable Trademarks

  1. The very first mark registered in UK, a label for pale ale bearing the famous bass red triangle, used for beer.
  1. The coca cola trade mark: a soft drink/beverage based on a formula for an unexceptional syrup.
  1. The shape of the Coca Cola bottle which was based on the shape of the coca bean, with and without the stylized word coca cola.

Real examples of proposed Trademarks that were refused on absolute grounds:

The absolute grounds for refusal are given be S.3.

S.3(1) a A sign which did not satisfy the requirement of "capable of being represented graphically" was a description of smell and a sign which did not satisfy the requirement of "capable of distinguishing goods" was a mnemonic telephone number

S.3(1) b A trade mark which was considered as "devoid of any distinctive character" was the shape of toasters, the name of Jane Austen for toiletries.

S.3(1) c Trademarks which were consisted exclusively of signs or indications which may serve in trade, to designate the kind quality, intended purpose value, geographical origin, the time of production of goods or of rendering of services. Eurolamp Trade Mark fell foul of .3 (1) c as describing the kind or geographical characteristic of the goods.

S.3(1) d A trade mark which is consisted exclusively of signs or indications which had become customary in the current language or in the bona fide and established practices of the trade was the word bitter for beer and the use of a red rose design in England ruby shirts.

S.3(2) As regards shape marks, a sign shall not be registered as a trade mark if it consists exclusively of

  1. the shape which results from the nature of the goods themselves
  2. the shape of goods which is necessary to obtain a technical result or
  3. the shape which gives substantial value to the goods

A trade mark refused on the grounds 3 2 (a) above:-

In Dualist Ltd's (Toaster Shapes) Trade Mark Applications, the shape of toasters

In Philips Electronics NV v. Remington Consumer Products Ltd (the mark comprising a drawing showing the shaving head of a three-headed shaver, was incapable of distinguishing). In respect of s.3(2) b Jacob J, thought that the sign consisted exclusively of a shape necessary to achieve a technical result.

S.3(3) a Contrary to public policy or accepted principles of morality the 'Jane Austen' trade mark had been rejected as there was not any public policy interest in granting a celebrity the exclusive right to use her own character for merchandising purposes. In La Marquise Footwear Inu's Application, the word 'OOMPHIES' was applied for in respect of shoes. It was rejected by the Trademarks Registry on the ground that the word had connotations with sex appeals thus it was against the accepted principles of morality.

S.3(3) b Deceptive Marks

The words 'Dairy Gold' & 'Livron' were held to be capable of deceiving the public as to the nature or geographical origin of goods.

S.3(4) An application to register a word mark 'Somerset Champagne' would be refused because its use would contravene a European Community Regulation.

S.3(5) Trademarks consisting of or containing things such as the Royal arms, flags, representations of Her Majesty or members of the Royal Family, words, letters or devices likely to lead persons to think that the applicant has or recently has had Royal patronage or authorization/consent.

S.3(6) Application made in bad faith:

In Imperial Group Ltd v. Philip Morris & Co. Ltd The CA considered the application for the ghost mark ('Nerit' instead of the non-registered 'Merit') was made in bad faith.

Real examples of proposed Trademarks that were refused on relative grounds.

S.5(1) Identical trade mark, identical goods:

In Decon Laboratories Ltd v. Fred Baker Scientific Ltd, it was held that the use of an identical sign with a suffix descriptive of the nature and quality of the goods was use of an identical sign. The claimant's registered trade mark was the word 'Decon' and the defendant's used signs such as 'Decon-Phone', 'Decon-Phase' and 'Decon Clean'.

S.5(2) Incomplete identity of mark and goods or services:

In Betty's Kitchen coronation street Trademark, the mark was rejected on the ground that a sufficient number of people would be v confused (because of their lack of detailed knowledge of the television soap and the character Belty Turpin).

S.5(3) In C.A. Sheimer (M) soln BHd's trade mark application [2000] R.P.C. 484 registration of the mark VISA for use in the sale of condoms was denied as the use of the mark would take unfair advantage of or be detrimental to the distinctive character and reputation of the well known credit card company.

S.5(4) In Wackers Trade Mark, an application to register 'Wackers' for toys and games was opposed on the grounds of passing off and bad faith.

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.