News headlines are sometimes becoming made up of big brands, which in some cases have failed to enter a trade mark for their product. Lindt foiled his signature gold from becoming a chocolate in Germany, similarly Rubik lost his bid to register the European Union’s trademark for the puzzle. The latest version of this string of companies Nestle failed to register Kit Kat design and failed. Nestlé’s application for trade mark registration failed on the basis that the four-finger chocolate bar design was not quite specific. This question raises the intellectual property law in the world, which will cross the trade mark examination, and in fact this examination is in the UK

Background

For many years, the UK applied a tripartite test for applications made in the trademark registry, if the mark failed in any exam, then the registration failed. Three-phase testing included three questions are:

  • Whether the mark was capable of being a trade mark within the s1(1) definition.
  • Whether, if was, it should be refused registration under any of the absolute grounds under s3 of the Trade Mark Act 1994(including the law on passing off)
  • Whether it should be refused registration for any of the relative grounds in s5 of the Trade Mark Act 1994.

However problems ensued with the exponential growth of the Community Trade Mark system. Widely speaking, the general rule throughout many EU counties is that it is for others to object to the trade mark themselves, as opposed to the registrars undertaking searches.

UK Adopted a technique

The UK trade mark system is reliant upon objections, namely relative grounds for refusal. The mark however must first surpass the stage of absolute grounds for refusal. The absolute grounds for refusal are contained within s3 of the Trade Marks Act 1993. Under s3(1) the following shall not be registered:

  1. Signs which do not satisfy the requirements of section 1(1);
  2. Trademarks that are devoid of distinctive character;
  3. Trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
  4. Trade marks that consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

Common grounds for refusing registration of a trade mark are when it involves;

  • The use of names of individuals or businesses;
  • Aspects of the goods or services on offer; and
  • Geographical origins of the goods or services.

Refusal arise

When there is a conflict with the trademark, then a person or company is trying to register and the trademark that already exists, which is the same or similar. Relative basis of denial is identified under the Trade Mark Act 1994’s s5.To avoid a trademark, the registration has been refused to be canceled, it is highly advised to search since the business marks are registered for a specific type of good or service, the starting point of the proposed trade mark within the relevant category Searching is always.

The relative grounds differ on whether the trade mark is identical or similar and whether the goods/ services it is applied to are identical or similar. Whereas, if the goods/ services are similar and the trade mark is held as identical then evidence of a likelihood of confusion is needed (s 5(2)(a)), this is the same if the trade mark is held as only similar.

Benefits

There are many benefits that can arise from entering a trademark from a company, whether it is in relation to their products and / or services or their company name. Although testing for registration can experience high potential, once crossing the profits could make any losses run faster. A registered trade mark provides an exclusive right to the owner, it is very easy for the company to take action for a trademark infringement and thus it can act as a strong deterrent for counterfeiters