Meet Madrid’s most refused
What’s behind the high rate of rejection for UK Madrid users filing overseas?
Assessing the distinctiveness of trade marks can be a subjective and imprecise process, particularly in the context of global screenings. What passes for distinctive in one country may fail in another. Local practices can vary significantly.
Applicants from the US often believe that their marks are treated most harshly on distinctiveness grounds in other countries. US counsel also believe that overseas applicants to the US benefit from a less restrictive distinctiveness standard. It is likely that numerous UK applicants and their counsel have similar viewpoints. To date, this has been a question answered only with anecdotes and war stories. However, new information available from Trademarks OnPoint provides actual insights into whether these suspicions are valid.
Trademarks OnPoint has developed a Global Trademark Distinctiveness database that categorises refusals issued to Madrid Protocol extensions. Refusals based on absolute grounds are the basis for the new data collection. By running queries against this data, it is possible to access insights into refusal trends across the globe.
For this study, we analysed three years of WIPO refusal data (2018-2020). This three-year data set covered 1,436,176 extensions and 426,818 refusals. For the purposes of this study, we chose several jurisdictions that received the majority of Madrid extensions, along with key-holder countries (the UK, the US, Japan, Germany, China and South Korea). Analysis of this data revealed that applicants from the US and UK were refused on absolute grounds most often.
One example of how these two countries lead refusals on absolute grounds is supplied by France, where, for some reason, UK extensions were refused at a much higher rate than any other country, with the US in second place (see table below).
Other countries in which UK extensions are the most refused on absolute grounds are the US and Russia. UK extensions to the US are refused 30% of the time, far higher than the average refusal rate of 23% for all other key-holder countries into the US. Similarly, applicants from the UK lead the pack for absolute grounds refusals in Russia at 25% among the same set of key-holder countries. The average refusal rate among the key-holder countries was 18%.
France: Absolute grounds refusal rates
|
Country of holder |
No. of designations |
Refusal rate |
|
UK |
157 |
12% (19) |
|
US |
953 |
7% (66) |
|
Japan |
414 |
6% (26) |
|
Germany |
810 |
6% (45) |
|
China |
4,178 |
2% (81) |
|
South Korea |
257 |
1% (3) |
|
Average |
|
4% |
Source: WIPO (designation data, 2018-2020); Trademarks OnPoint (refusal rates)
Disclaimer in play?
As both the US and Russia employ a disclaimer practice, it is possible that the refusal percentages reflect the fact many UK marks employ disclaimable elements (Trademarks OnPoint refusal data includes those refusals requiring disclaimers). A more accurate reflection of how UK marks fare on this topic overseas is to look at data from countries that do not have a disclaimer practice.
Accordingly, to find an answer to this question, we analysed several non-disclaimer countries. UK applicants consistently ranked either first or second for refusals across many non-disclaimer practice jurisdictions, including Australia, Germany, India, Norway, Korea, Japan and Singapore.
Germany (see table below) is an example of the way in which UK marks are frequently refused on absolute grounds, with almost a third of all extensions there being refused, at a rate 7% over and above the average refusal
rate of 21%. Oddly, the EUIPO is not as hard on UK applicants as most UK counsel assume. While the EUIPO refuses at a much lower rate overall (3% on average across the key-holder countries), UK applicants fare moderately well, with only a 2% refusal rate. Applicants from the US, France and Japan are refused at higher rates (3-4%).
While the data trends bear out the general premise that US and UK applicants suffer higher than average absolute grounds refusals, it does not explain the reason for these results. We suggest that two fundamental factors are at play that may explain this situation: (i) differing trade mark office perspectives on the threshold for inherent distinctiveness; and (ii) additional absolute statutory bars in some countries. These two factors result in marks that are held to be inherently distinctive and registerable in the US or UK nevertheless being tripped up by local absolute grounds.
Non-disclaimer practice: Germany’s absolute grounds refusal rates
|
Country of holder |
No. of designations |
Refusal rate |
|
UK |
185 |
28% (51) |
|
US |
1,041 |
24% (253) |
|
China |
4,559 |
21% (959) |
|
Japan |
379 |
21% (79) |
|
France |
1,112 |
18% (197) |
|
South Korea |
281 |
10% (27) |
|
Average |
|
21% |
Source: WIPO (designation data, 2018-2020); Trademarks OnPoint (refusal rates)
Distinctiveness hurdles
Many registered marks originating from the UK nevertheless fail overseas on pure distinctiveness grounds. Some examples support this observation.
Cosmetics marks always seem to come close to the distinctiveness line. For example, CHECKMYHAIR (international registration no. 1520346) for hair care services was registered in the UK and extended to several other countries. The US approved the mark as distinctive, but the trade mark offices in China, the EU, India and Brazil refused the mark as descriptive. Another mark registered in the UK for toothpaste, TOOTHY TABS (IR 1476306), had its extensions to almost a dozen countries approved, with most examiners presumably finding the term “toothy” to be suggestive of the goods it represents. However, China and Thailand found the mark to lack distinctiveness. Similarly, the mark BELIEVE, BUILD, BECOME (IR 1486070) registered in the UK for cosmetics, apparel and certain business consulting and training services was partially refused by the EUIPO for those class 35 and 41 services. The examiner stated that the mark would be perceived as a laudatory slogan intended to communicate an inspirational message. The USPTO had no such problem with the mark. This case bears out the stricter position certain jurisdictions take on slogans.
Food and beverage marks from the UK are also fertile ground for disagreement among the offices. Oddly, the EUIPO was fine with the mark ACADEMY OF CHEESE (IR 1557357) for educational cheese classes. Does this “cheese academy” really exist? It seems to be a light-hearted reference to a fictional cheese school. Still, the trade mark examiners in China, Australia and New Zealand said the mark was descriptive.
A more puzzling example of a lack of understanding of the meaning of a term is the mark TEMPERANCE (IR
1510226) for alcoholic beverages. The mark is easily defined as “abstinence from alcoholic drink” – the opposite of the good it represents. The US and Canadian offices easily saw the lack of connection between mark and good and agreed with their counterparts in the EU (where the basic registration was issued) that the mark was inherently distinctive. Nevertheless, China held that the mark lacked distinctiveness.
Marks with double meanings also sometimes run into trouble, like NO BULL (IR 1506156), registered in the UK for vegan and vegetarian food items. While the mark was seen as distinctive by the US, EU and Russian offices, Norway held that the mark lacked distinctiveness. While vegan food clearly does not have “bull” in it (in the sense of beef or meat products), the point of the mark was an obvious play upon the slang meaning of the phrase of “not kidding”. Perhaps Norwegian examiners are much more literal thinkers.
Norway also bears out the example of certain offices pulling apart marks, defining their elements and then predictably finding the mark as a whole devoid of distinctiveness. An example of this is the case of BONDASHIELD (IR 1402644). Some six years after the UK IPO registered the mark BONDASHIELD for plastic films for industrial use, the markholder sought protection in the EU, Norway, Japan, South Korea and Turkey. The result? Every office approved the mark except Norway, which held it to be descriptive after torturously pulling apart the elements of the mark and analysing each. For most English speakers, the mark does not immediately convey the purpose of the good because the “A” element disrupts the flow of the mark and renders it suggestive.
Design marks also sometimes falter overseas, as in the case of the mark shown above (IR 1457644), registered for a variety of goods and services ranging from engines, lubricants and vehicles to vehicle design and installation services. The Applicant extended to nine countries (including the EU, US, India and Japan), which all found the mark distinctive. Norway broke in the other direction and held that the two-shape geometric design was devoid of distinctive character.
Confusing refusals
Some distinctiveness refusals are real head-scratchers. For example, the EVOLUTION mark (IR 1242517), registered in the UK for protective eyewear and ear plugs and approved in 20 other countries, was held to be non-distinctive in Germany. While in taking that position Germany may be an outlier, several other refused UK extensions to Germany seem to bear out a difference in office practice on what counts as distinctive. For example, the following marks were approved in the UK but refused in Germany:
- IBET (IR 1527876) for gambling and gaming software;
- FEELUNIQUE (IR 1426265) for retail related to cosmetics;
- THINKFINANCIAL (IR 1526160) for financial goods and services;
- PROPER CHIPS (IR 1521765) for clothing and food items (including crisps).
PROPER CHIPS is another example of a mark sitting on the dividing line. Norway and Ireland also refused the mark as lacking distinctiveness at least with respect to crisps, but Benelux, Switzerland, Spain, France, Italy, Poland and Portugal approved the mark.
Additional absolute bars
One other basis for refusals overseas that tend to ensnare both US and UK applicants are morality grounds. China has a seemingly inexhaustible supply of reasons why a mark will be deemed “unhealthy”. Some of the categories of such marks include those with sexual, religious, undead, currency, political or rock-and-roll connotations.
For example, a UK mark containing the word SEX (IR 1329995) in connection with clothing was held to be unhealthy and unregisterable in China and Russia. The mark JIMMY CHOO ILLICIT (IR 1291240) for cosmetics and soaps was refused in China as the word “illicit” is unhealthy there.
Marks with religious connotations are also frequently refused, as a Kent-based hair salon branded as THE CHAPEL (IR 1350977) discovered when it extended its registration covering 13 different classes to China. The entire extension failed due to the unhealthy influence of the religious connotation. The CATHEDRAL CITY (IR 935441) mark registered in the UK since 1986 for cheese was similarly tossed out by the Chinese examiners as unhealthy. China also frowns on references to the undead: for example, VAMPIRE VAPE (IR 1334255) for e-cigarettes, was similarly refused as unhealthy.
Marks including references to currency are also immoral in China, such as GOODDOLLAR (IR 1435141) for charitable fundraising goods and services. And anything deemed political will be refused, as was the case for REBEL (IR 1509270) for combs and brushes.
Finally, “edgy” marks also tend to have trouble in China. The mark CONTAMINATOR (IR 1486086), filed by Marshall Amplification for goods including musical instruments, was refused as unhealthy. The mark GANGSTA’S PARADISE (IR 1515395) for perfumes and cosmetics also met the same fate.
Of course, not all morality refusals come from China. The ENPULA mark (IR 1477203) for pharmaceuticals was filed first in the UK by GlaxoSmithKline and then at WIPO. The EUIPO subsequently refused the mark. Apparently, the term translates to “dick” in Romanian and is therefore immoral under EU practice. China did not find that same translation and granted protection, but GlaxoSmithKline cancelled the IR nonetheless.
So, the data on US and UK Madrid Protocol extension refusals based on absolute grounds, along with the above examples, suggest that applicants from these two countries tend to choose marks closer to the line between descriptive and suggestive than those applicants in other countries. On the other hand, perhaps applicants from the UK and US exist in a much more permissive branding environment and are often caught by surprise with a morality refusal. In either event, a UK markholder seeking to file or extend in other countries should be aware that the UK IPO is far more accepting of marks on absolute grounds than other offices.
Christopher Schulte is a Partner at Merchant & Gould
Co-authored by Anne Olson, Founder at Trademarks OnPoint.
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