There are two types of common trademark problems often faced by owners seeking to register a trademark. As experienced trademark agents, TMR Fitzsimons can advise on the different grounds of trademark objections and oppositions and explain why you are facing them. Our specialist advice can help to overcome these types of difficulties.
The first set of reasons why your application to register a trademark may be refused or opposed are described as absolute grounds for refusal. These grounds relate to the characteristics of the trademark itself and some trademarks will automatically fail to be registered as a trademark. Unless (and only for the first four grounds in the list) a trademark has become distinctive through use, it will not be registered if it breaches any one of these ‘absolute grounds for refusal’:-
- cannot be represented graphically;
- is devoid of any distinctive element;
- consists only of terms used in your trade to describe what the goods or services are;
- consists of words or images that have become customary to use in your line of business;
- consists exclusively of the shape of the goods, or of the part giving them substantial value;
- is a specially protected emblem;
- is deceptive about the actual qualities of the goods or services;
- is considered offensive, contrary to public policy or morality; or
- promotes a service that is against the law.
Even if your trademark passes the examination for the absolute grounds for refusal, it is likely to face objections from the trademarks office or another trademark owner if it is considered to conflict with an earlier right. This earlier right can either be a registered or an unregistered trademark. These are called relative grounds for refusal, because they relate to other trademarks. The rules applied by the trademarks office and the courts in deciding issues based on relative grounds for refusal are set out below. A series of comparison tests are considered in order to establish these answers and you can read more about those here.