To register a TM two criteria must be satisfied:

1. It must not fall into the Absolute Grounds for refusal; and
2. It must not fall into the Relative Grounds for refusal.

Absolute Ground for Refusal

• That the trade mark does not fall within the definition of a trade mark.
• The trade mark is devoid of any distinctive character.
• The trade mark is purely descriptive of the goods or services for which it is being registered.
• The trade mark is a term that is generic and commonly used in the relevant trade.

The latter three grounds for refusal can all be overcome if the applicant proves that the trade mark has acquired distinctiveness, which in essence means proving the public associates the mark with you, despite it being generic, descriptive or devoid of distinctive character. For example, the slogan ‘compare the market’ was devoid of distinctive character, but it was proven that it had acquired distinctiveness and therefore was a valid trade mark.

Relative Grounds for Refusal

The relative grounds for refusal, which can only be raised by parties with existing rights, are:

• Where there is an identical earlier registered trade mark and the registration is for identical goods and/or services.
• Where there is an identical or similar earlier registered trade mark, and the registration is for either identical or similar goods or services. In this situation, there must also be a likelihood of confusion on the part of the public, which includes the likelihood of association of the two trade marks.
• A mark that takes unfair advantage of or is detrimental to the reputation or distinctive character of an earlier mark that is identical or similar. In essence, this is where a trade mark is piggy backing on the reputation of another brand. For example, Asda was not allowed to use the trade mark SPEC SAVINGS AT ASDA because it was deemed to be taking unfair advantage of the Specsavers brand and reputation.

In respect of the first criteria. We are able to carry out a preliminary review of your proposed Trademark. We also offer the assurance application service for which you will be eligible to a 50% fee reduction if the Trademark is not acceptable to the UK Intellectual Property Office.

In relation to the second criteria, we always advise that you instruct us to carry out a search of trademark registers in UK and EU. If you would like us to do this before proceeding to apply for your trademark registration, please let us know.

The process to register your TM will be as follows:

1. You tell us the TM you want to have registered and for what services and in what location.
2. We shall review your TM and tell you what classes you can register in.
3. If you would like us to carry out a search for existing similar trademarks, for a view on whether there is risk of opposition, we shall do this.
4. We shall apply to register your TM.
5. We shall keep you updated on the process and on any objections or potential oppositions to your TM.
6. Finally we shall send you your TM registration certificate.

Once submitted we will deal with all correspondence from the IPO and you can follow the progress of your application online at the UK Intellectual Property Office website by entering your application number here: https://www.ipo.gov.uk/types/tm/t-os/t-find/t-find-number.htm or for EU CTM you may follow the progress of your application online at OHIM’s website by entering your application number here: https://oami.europa.eu/CTMOnline/RequestManager/en_SearchBasic

Registration confers on its proprietor the statutory right to the exclusive use of the mark in connection with the goods or services for which it is registered (section 9, TMA and Article 9, EUTM Regulation). Registration therefore gives the proprietor the right to sue for trade mark infringement any person who uses an identical or similar mark (termed a “sign” in the legislation) in the course of trade in connection with identical or similar goods without authorisation. The proprietor must also show that the use has caused or is likely to cause confusion, except in cases where the marks are identical and the goods or services are also the same (section 10, TMA and Article 9, EUTM Regulation).

If the mark has a certain level of reputation in the UK, there is a wider right to prevent others from using the same or a similar sign for goods or services (whether similar or not), where that use, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark (section 10(3), TMA and Article 9(2)(c), EUTM Regulation).

Goodwill arising through our use and investment is also protectable under English law through the common law cause of action of passing off. The action under passing off allows the owner of goodwill acquired through use of a mark to claim relief in the courts against any third party who misrepresents the commercial origin of goods by seeking to pass off its goods or services as those of the goodwill owner, in a way which causes the owner of the goodwill damage. An actionable misrepresentation includes instances where a third party’s actions give rise to the impression that there is an endorsement, association or other commercial connection between that party and the owner of the goodwill. Damage does not necessarily have to be any tangible financial loss such as loss of sales and can include damage as a result of dilution of a brand name or erosion of its distinctiveness.

Passing off is an action available to owners of unregistered TM, but in some circumstances, an action for passing off can succeed in relation to registered TM where a trade mark infringement claim cannot. For example, the makers of “Penguin” chocolate biscuits were able, by means of a passing off action, to prevent the supermarket chain Asda from marketing its own brand of biscuits in packaging deceptively similar to that used for “Penguin” biscuits (United Biscuits (United Kingdom) Limited v Asda Stores Limited [1997] RPC 513). By contrast, they failed in their claims in this action for infringement of registered trademarks (such as a claim that the word mark PENGUIN was infringed by Asda’s choice of “Puffin” as its brand name and a claim that Asda’s puffin bird device infringed registrations of penguin devices).

If the owner of goodwill in an unregistered mark has good grounds for preventing use of another trader’s mark by way of an action in passing off, that person will also be able to prevent that other trader from registering its mark. The owner of the unregistered mark would have to prove that passing off would occur if the applicant’s mark were to be used as set out in the trade mark application.

Publicly made statements can have a damaging effect on businesses and brands. This issue is more prevalent in our society than ever before with the reach of online and social media which has given more people a platform to voice their opinion.

A statement is not defamatory unless its publication has caused or is likely to cause serious harm to the reputation of the claimant. Defences may be based on truth, public interest, privilege or honest opinion.

Typical remedies sought in defamation cases come in the form of damages, declarations, injunctions, specific performance and orders to remove or clarify statements or make public apology.

If you have an issue relating to defamation, please contact our Brand Protection team who can assess the matter for you and advise.