Certain things can't be registered as trademarks
Here is what you need to know to make sure your trade mark can be registered.
Words by Todd Bateman
The function of trademarks
Trademarks (spelt "trade marks" in the UK) serve as a link between customers and producers, allowing consumers to correlate a product with its origin, allowing them to make informed purchasing decisions.
It is important that trademarks are able to perform this function. As a result, there are certain types of signs which are not permitted as registered trademarks.
Within the Trade Marks Act 1994, these are outlined within sections 3 and 4 of the act.
What follows below is a quick overview of the main grounds for refusal.
Absolute grounds for refusal
Absolute grounds for refusal refers to types of marks that when reviewed by the examiner would be refused outright.
Signs which do not satisfy Section 1
Section 1 of the trade mark act refers to the ability of the sign to perform the function of a trade mark. This means it should be able to be presentable in the register in a way that clear exactly what it protects, and that the mark is capable of distinguishing the goods and services from others. It must also fall underneath the different forms of registrable trade marks (e.g. words, designs, colours, sounds etc.) For more information on forms and classes of trademarks, read here.
Trademarks which are devoid of any distinctive character
Trademarks must be distinctive. Their purpose is to help goods "stand out" from others in the same categories of goods and services. If this is not the case, or a mark is too generic, it may not be registered. Generally speaking, distinctive trade marks helps brands perform commercially too.
Trademarks that are exclusively descriptive or laudable
Trademarks must not be descriptive of the function of the goods or services they cover. "SUITED" lawyers or "BIG VAN" delivery services will likely fall foul of examination.
Trade marks which are also laudable will find difficulty in being accepted, "GOLD STANDARD" accountants or "NUMBER 1" hairdressers, are a couple of examples here.
Trademarks which are customary in the course of trade
Trademarks which are customary refer to words or phrases which, within that particular classification of goods or services have become typical parlance. Ultimately, trademarks are a monopoly right, and ownership over such widely used terms is not the purpose of a trade mark. An example of this might be "burn" for computer peripherals which "burn" Blu-ray™ discs.
A shape which results from the nature of the goods themselves
Shapes can be registered as a trade mark, but you cannot register the shape as a trade mark if the mark in question is inherently how those goods are shaped...
A shape that is necessary to obtain a technical result
Nor whether the shape in question performs a necessary function in obtaining a technical result (i.e. the shape does something which without the goods would not be able to do...
A shape that gives substantial value to the goods
Nor can the shape registered be seen to give substantial value to the goods.
An example of a registered shape mark that does not fall foul of these rules is Toblerone. Chocolate is not inherently a triangular prism, nor does that shape perform a technical function to chocolate that would hinder others (e.g. if you sought to trade mark the shape of a wrench), nor does it add any substantial value to the chocolate apart from recognisability.
Contrary to public policy or accepted principles of morality
Offensive trademarks or those that fall foul of accepted principles of morality will find difficulty during examination.
This includes things that risk offending others, such as swear words or insults to other people's religion or racial status is not allowed to be used as a trademark.
Broadly speaking, the principles of morality are undefined and change over time, and as such trademark registrants should be prepared to err on the side of caution.
Of a nature that would deceive the public as to the nature, quality, or geographical original of the goods or services
Another key attribute of trademarks is that they should not be deceptive. A fizzy drink should not be branded as "STILL", a low-quality necklace should not be branded as "COUTURE" and goods coming from the local farm should not be branded as "IMPORT". Brands stand to clarify the origin of goods or services, and should not impact the public's ability to understand what they are.
Which broadly is prohibited under UK, international agreement
There are several international agreements that also prohibit certain kinds of marks. These include:
- Designation of origin or geographical indications - "GRUYÈRE", "SWISS" (watches), "ARGAN OIL", "TEQUILA","PROSECCO", "CHAMPAGNE", "BORDEAUX"
- Traditional terms for wine or traditional specialities - "CABERNET SAUVIGNON", "CHARDONNAY", "HALLOUMI"
- Protection of plant variety rights
If made in bad faith
Bad faith registrations refer to registrations made with bad intentions. These registrations are not made with the earnest intention of correct trade mark use. Instead, they may include attempts at blocking others from registering certain marks, or other wrongdoing.
If it consists of or contains specially protected emblems including
Various forms of Royal imagery are exempt from registering as trademarks. In essence, you are not allowed to associate your goods and services with the Royal family as this may mislead both in terms of endorsement or origin. This includes but is not limited to:
- The Royal arms
- The Royal Crown or any Royal flags
- A representation of Her Majesty or another member of the Royal family
- Devices that would lead people to believe that the applicant receives endorsement from the Royal family
These are prohibited unless consent is given by Her Majesty or the relevant member of the Royal family.
The Union Jack and other UK flags if this would be misleading or offensive
Use of UK flags, including the Union Jack and the English, Scottish, Welsh or Northern Irish flag are prohibited if this is misleading or offensive. As such, the goods or services would have to be geographically appropriate to the intended mark, as well as not likely to cause offence to the relative population.
International flags and emblems relating to certain international organisations
Use of international flags, more generally, is prohibited. As such, registrations containing flags from outside the UK are highly unlikely to be accepted by examiners.
Coats of arms and those which are similar to those already granted by the Crown
Other emblems also fall into the prohibited territory. Specifically, coats of arms and emblems granted to the aristocracy and otherwise are not able to be registered, nor are those which approach these emblems with a level of similarity.
Consists of or contain the Olympic Symbol
The Olympic Symbol and others that include it are also prohibited from registration as a trade mark.
Advice from an intellectual property expert will ensure that your mark is reviewed before registration, and any potential issues are avoided before it is submitted for examination.
Should the submitted trade mark registration pass the examination on absolute grounds, it is then open to opposition, invalidation on relative grounds, depending on other published trade marks on the register.
For more IP answers, review our FAQ section here.
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Disclaimer: This FAQ should not be construed as legal advice on any specific facts. The contents are intended for general informational purposes only. You are urged to consult your own solicitor on any specific legal questions you may have.