Top five reasons trade mark applications are rejected
Practical advice on how to avoid the common pitfalls and get your trade mark application through.
Take a look at five of the common pitfalls that applicants often face, and how to overcome or avoid them, with the help of a Chartered Trade Mark Attorney.
For every trade mark application that makes it through to registration, there are many which are delayed by objections, oppositions or simply refused. This can be frustrating, costly and time consuming. However, it can also be avoidable!
There is a lot more to choosing a trade mark, than just having a great idea for a logo and getting it registered. Chartered Trade Mark Attorney's are experts in helping businesses to register a trade mark in an efficient and cost effective way. Before you can proceed with an application, there are a few common things you should consider.
IPO says no!
Each Intellectual Property Office has a clear threshold for registering a trade mark, this is to avoid saturating the market with weak trade marks and diluting the commercial importance that a trade mark can have for a business.
It is important to understand that a trade mark application can be receive objections or be refused registration by an examiner, or be opposed on absolute grounds by an existing rights owner, or be opposed on relative grounds by a member of the public in any of the following circumstances:
1. Your proposed trade mark is descriptive or devoid of distinctive character
Where you have an idea for a trade mark, but the idea is descriptive or already in common use in the industry, the Intellectual Property Office can raise an objection.
For example, registering an apple logo as a trade mark for a fruit and vegetable shop would result in an objection because the mark is descriptive of the goods being made available for sale to the public.
Whereas registering an apple logo as a trade mark for technology devices would be valid as it is not descriptive of the goods being sold.
Carefully considering the norms of the market for the goods/ services of your proposed mark can prevent you from wasting money on an application which will instantly incur an objection for descriptiveness.
Chartered Trade Mark Attorneys can undertake comprehensive searches to determine whether the proposed mark is descriptive or in common use by others in the market, or assist you at the objection stage to remedy the deficiency in your application.
Failure to overcome this objection will result in the application being deemed never to have been made; this is a costly and avoidable consequence.
2. Your proposed trade mark is not precise and identifiable
The requirement that your trade mark application precisely identifies the mark which you seek protection for is important and should not be underestimated.
The application should contain the full scope of protection sought so that it is clear to third parties inspecting the register, what exactly the trade mark is, and the extent of your protection to avoid infringement.
Where the trade mark is not precisely identifiable, and a multitude of different combinations is possible, the application can be rejected.
For example, two Redbull trade marks for the colour combination of silver and blue were declared invalid because the descriptions:
"protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%"; and
“the two colours will be applied in equal proportion and juxtaposed to each other”
did not clearly indicate the type of arrangement in which the two colours would be applied to the goods, as the term “juxtaposed” could be understood as “having a border in common with”;“placed side by side”; or “dealt with close together for contrasting effect”; and was therefore not self-contained, clear and precise.
A Chartered Trade Mark Attorney can advise you on filing an application that is precise and identifiable, this is likely to reduce the time it will take to process the application and associated costs.
3. Your proposed trade mark is contrary to public policy / principles of morality
Your proposed trade mark should not be perceived by the relevant public, or at least a significant part of it, as going against the standards, values and norms of society.
For example, the trade mark 'La Mafia se sienta a la mesa’ (Take a seat at the table) in relation to catering services, was declared invalid on grounds of morality.
Although the applicant argued that they had no intention to shock or offend, it was decided that the expression "La Mafia" was contrary to public policy on the basis that "Mafia" referred to a criminal organisation and to allow its registration would promote the organisation in a positive light, thus trivialising its negative connotations that are understood worldwide.
When deciding if your trade mark is contrary to public policy or principles of morality, common sense should prevail. You should be mindful of what the public would associate with the mark and therefore the perception that is given of your brand.
A Chartered Trade Mark Attorney can help you to communicate the right message of your brand and advise you on how appropriate a trade mark is, especially across different jurisdictions where it may have a different meaning or interpretation based on translations or local customs.
4. There is an existing trade mark that is registered and a probable likelihood of confusion with your proposed trade mark
Where you file an application, but a third party with existing rights has a same or similar mark for same or similar goods/services then they can oppose your application.
This is to prevent members of the public confusing the origin of your goods/services with those of another, and to stop competitors from benefitting from your marks reputation in the market.
For example, the brand "MASSI" objected to the famous footballer Messi from registering the word "MESSI" for sports clothing, footwear and equipment due to the visual and phonetic similarity with their existing mark, and similar goods and services.
The dispute eventually settled, upon appeal, that a significant part of the relevant public will associate the term ‘Messi’ with the name of the famous football player and will, therefore, perceive the term ‘Massi’ as being conceptually different. Messi was able to proceed to registration.
Seeking pre-filling advice from a Chartered Trade Mark Attorney about what marks already exist in the market, can prevent an application from being made that will be opposed by an existing rights holder. A comprehensive search can be carried out by Chartered Trade Mark Attorneys, to determine the availability of a trade mark. Where a similar mark exists on the register, a Chartered Trade Mark Attorney can be invaluable in overcoming the obstacle, by changing the strategy of your application, so that your mark makes it through to registration.
5. Your proposed trade mark designates a characteristic which is deceptive to the public
An application for a mark which designates a characteristic such as quality or value, for example, seeking to register a hotel trade mark for "5* Arabia Hotel" or "Budget Arabia Hotel" would raise an objection because it denotes a quality which is not substantiated, and is therefore deceptive to the public.
Likewise, applying for a trade mark which denotes a geographical origin, from which the product does not derive, can also raise an objection. For example "Champagne" can only be used on sparkling wine that originates from the province of Champagne.
It is important to understand that an application can be refused, where it is clear that deceit exists or there is a sufficiently serious risk that a consumer will be deceived.
Don’t cut corners!
Registering a trade mark can escalate into a time consuming and expensive process if approached incorrectly, with applications being delayed due to objections, or outright refused.
Some businesses may try to cut corners to save money, and file their own applications online through the relevant IPO, and only seek the advice of a Chartered Trade Mark Attorney when things go wrong.
However, Chartered Trade Mark Attorney's can assist with providing crucial pre-filing advice that can help save time and money in the long run, by steering an application away from the common pitfalls that often delay or prevent a trade mark from being registered. With the help of a Chartered Trade Mark Attorney, you can make an informed decision from the outset, and articulate a stronger application before filing.
If you would like further information or advice please use the Find a Chartered Trade Mark Attorney tool on the CITMA website.
Rebecca McBride is a CITMA Paralegal at Pinsent Masons LLP (London)