Only certain types brands can be legally protected as trade marks
The law restricts some kinds of registrations, it is important to know what these are before seeking to register a trade mark. Read on.
Photo by Belinda Fewings on Unsplash
Words by Dr Martin Douglas Hendry
A trademark is a symbol, word, or phrase that distinguishes a particular brand, product, or service from others in the market. Registering a trademark can prevent other businesses from using similar marks that could confuse customers. In the UK, the registration of a trademark is governed by the Trade Marks Act 1994 and the Trade Marks Rules 2008. However, not all marks are eligible for trademark registration. This blog aims to outline the items that cannot be registered as a trademark under UK law.
Examples of What Cannot be Registered as a Trademark
The following are examples of what cannot be registered as a trademark in the UK:
Descriptive words or phrases
A trademark application can be refused if it consists of words or phrases that describe the characteristics, qualities, or features of the product or service. For example, the words "soft", "fresh," or "natural" cannot be registered as a trademark as they are commonly used to describe many products or services.
The purpose of a trademark is to distinguish a particular product or service from others in the market. Therefore, if a trademark consists of descriptive words or phrases, it will not be distinctive enough to fulfill this function. It is also unfair to allow one business to monopolize words that are commonly used to describe a particular product or service.
A trademark application cannot include a geographical name if the name indicates the origin, quality, or reputation of the product. For example, the name "London" cannot be registered as a trademark for tea or "Wales" for wool.
Geographical names are not distinctive enough to be registered as trademarks as they are commonly used to describe the origin or quality of a product or service. Allowing a business to register a geographical name as a trademark would give it an unfair monopoly over that name, preventing other businesses from using it in a descriptive manner.
A surname cannot be registered as a trademark unless it has acquired distinctiveness due to its extensive use in the market. For example, the surname "Ford" can be registered as a trademark for cars as it has acquired distinctiveness due to its extensive use in the market. Similarly, the surname "Cadbury" can be registered as a trademark for chocolate.
The reason for this rule is that surnames are not inherently distinctive, and allowing them to be registered as trademarks could give individuals with unique surnames an unfair advantage over others. However, if a surname has been used extensively in the market and has become associated with a particular product or service, it can be registered as a trademark.
Deceptive or scandalous marks
A trademark application can be refused if the mark is misleading, deceptive, or scandalous. For example, "No Cancer" cannot be registered as a trademark for cigarettes or "Trump" for a business.
The purpose of a trademark is to prevent confusion in the market, and allowing the registration of deceptive or scandalous marks would defeat this purpose. A trademark cannot be used to mislead customers or to associate a product or service with something that is scandalous.
Marks that are too similar to existing marks
A trademark application can be refused if it is similar to an existing mark that could confuse customers. For example, "McDowald's" cannot be registered as a trademark for a restaurant.
Allowing the registration of marks that are too similar to existing marks would create confusion in the market and harm the existing marks. This rule is in place to protect the reputation of existing marks and prevent unfair competition.
A trademark application cannot include generic terms that denote the product or service that is being offered. For example, "Computer" cannot be registered as a trademark for computers or "Bread" for bread.
Generic terms are common names that are used to describe a product or service, and they are not distinctive enough to be registered as trademarks. Allowing the registration of generic terms as trademarks would give a business an unfair monopoly over a name that is used to describe a particular product or service.
A trademark application can be refused if the mark includes a religious symbol that is likely to offend a particular religious group. For example, "Allah" cannot be registered as a trademark for alcoholic beverages.
Allowing the registration of religious symbols as trademarks could be considered offensive or insensitive to certain religious groups, which could lead to controversy and disputes.
In conclusion, not all marks are eligible for trademark registration under UK law. Marks that cannot be registered include descriptive words or phrases, geographical names, surnames, deceptive or scandalous marks, marks that are too similar to existing marks, generic terms, and religious symbols. The purpose of these rules is to ensure that trademarks are distinctive and not misleading and to prevent unfair competition in the market. If you are considering registering a trademark, it is important to ensure that your mark does not fall under any of these categories to increase your chances of successful registration.
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