Why has my trademark application been refused?

It is definitely frustrating when you have put a large amount of hard work into something for it to be knocked back. Not all trade mark registration applications succeed and become enforceable. A number, mainly those who have not received legal assistance in their application, are rejected for one reason or another.

Under the Trade Marks act 1994, there are two sections which contain two separate reasoning’s why a trade mark application may be refused.

A trade mark application can be refused under the absolute grounds for refusal under section 3 or can be refused under the relative grounds for refusal under section 5.

The absolute grounds for refusal of a registration of a trade mark are outlined in section 3 of the Trade Marks Act 1994. These grounds contain any policy reasons why a trade mark cannot be registered. If any applications do not satisfy the requirements in Section 1 for the mark to have the ability to be represented graphically and that they can be distinguished in goods and services then they will be refused under section 3 as an absolute ground. Other absolute grounds for refusal include the mark being descriptive and lacking in distinctive character, the mark is linked to a geographical place which could not be protected by trade mark rights in fear of creating a monopoly, the mark is essential to obtain a technical result; it originates from the goods themselves as well as others. If there is a fault with the mark itself and how it has been constructed, it is highly likely to be refused under section 3.

The relative grounds for refusal of a trade mark registration under section 5 of the Trade Marks Act 1994 are in relation to existing registered trade marks. If the mark you propose has a connection with mark that has already been successfully registered by another party then it is very unlikely you will succeed with your application. The section gives the number of ways in which a connection between the marks can cause the application to be thrown out. If the mark is identical/similar to anything existing on identical/similar types of goods or services then the mark will be refused registration.

If the mark is not caught by either of these grounds for refusal then there is nothing holding it back in the registration process.

Remember that if you instruct trademarkroom to assist you when registering a trade mark, these grounds will be considered and your mark adjusted before the application is finalised so there is no need for an anxious wait.

By Ellis Sweetenham