The concept of refusal on absolute grounds are a little bit more complicated. In gist, your mark is itself not registrable. We shall discuss here in greater details. The Relative grounds for refusal of registration of trademark will be raised if the mark is considered confusingly similar to an earlier registration. Please refer to “Relative Grounds for Refusal of Registration of Trademark” for more information.
On the face of reading, the word “absolute” does not give you many clues on what is happening. Well, “Refusal on Absolute grounds” actually means that your trademark is not registrable due to its own “defects”, but not because of the possible conflicts against other earlier registrations. To take the positive, whether your trademark can mature into registration is now entirely on your own, and you don’t need to be concerned about the trademark rights of other third parties.
Common grounds that a trademark will be refused on absolute grounds
There are a few common grounds that a trademark will be refused on absolute grounds. Honestly, it is a bit technical, but it is worth spending some time to understand more about the concepts!
(i) Indistinctiveness / Devoid of Distinctive Character
As said, a trademark is to tell the customers that the origins of your goods/ services are different from others. If, however, your mark is too simple or that customers are not used to regarding it as an indication of trade origin, your mark is not capable of carrying out such a function.
For example, if you see a yellow box appearing on an umbrella, are you ready to treat the yellow box as a trademark of the umbrella or just a decoration? Another example would be a single letter “L” for clothing. Will you consider it as “large size” instead of a trademark? The same applies also to a slogan, a sound mark, or a 3-dimensional mark. Unless you are educated, simply you will not consider them as a trademark.
(ii) Descriptive
When you see a “Prada” bag in the shopping mall, how would you like to describe it? Elegant? Classic? Beautiful? What then if I copy your word and use “Beautiful” as a trademark for my bag retailing business?
Sounds strange, right? Think about it! If you are also a bag trader, you’ve got to be very careful when using “Beautiful” in your trade, or you may infringe my “Beautiful” mark. Luckily, our laws also share with us and set a rule that if a mark describes the quality or characteristic of the covered goods or services, it should not be allowed for registration.
In practice, cases may not always be very clear-cut. Some marks are said to be “suggestive” only (i.e., you need to be imaginative enough to link the mark with the characteristics/ qualities), and should be allowed for registration.
(iii) Contrary to morality
This is all but sensible. If a designed Logo Mark, either the device or the word component would provoke outrageousness among the public, it could not, and should not be allowed to be registered as a trademark. In real life, it is sometimes so hard to draw a clear line, which occasionally causes problems, misunderstandings or annoyance: –
1. This is rather a subjective question;
2. This is highly related to the local culture and openness.
If you do not agree, let’s take on the following challenge. Imagine that you are an examiner, will you allow a skull-design mark to be registered in respect of class 14 (watches)? Probably the public will be of two minds. On one hand, not an insignificant proportion of the public will be rather displeasing with the mark (but may not to the extent of disgusting). On the other hand, there will also inevitably be another group of people (typically the younger and liberal generation) who create a special fondness and bonding with this skull-design mark. With more and more trademarks on the register, we observe that sometimes “negative” words or devices are adopted as a trademark. In fact, this conveys a “contrasting yet interesting” impression and no doubt catches your eyes. Barring clear-cut cases, arguably a trade mark should not be refused on this ground.
Acquired distinctiveness
The good news is that, like a human being, many “defects” could be “cured” for trademarks refused on absolute grounds. When a trademark is refused registration on absolute grounds, we say it is not accepted on a prima facie basis. That said, it is by no means a done deal. As indicated above, while the public is not used to treating the yellow box as a trademark, you can always educate them that the yellow box is intended to be your trademark. After your continuing and genuine marketing effort and actual sales of the yellow-box-branded umbrella for a certain period of time, the general public will gradually associate the yellow box only with your umbrella, so that you may be able to establish “acquired distinctiveness”. Your trademark journey could not always be smooth. It is therefore vitally important that you appreciate the concepts of absolute and relative grounds for refusal of trademark.
Hopefully, you now have a better idea of
(i) absolute grounds for refusal of registration of trademark;
(ii) the differences between absolute and relative grounds for refusal of trademark, and why you should engage Trasomark!!
#Trasomark
#TradeMarkApplication
#RefusalOnAbsoluteGrounds
#TradeMarkRegistrability
#IndistinctivenessOfTradeMark
#DevoidOfDistinctiveCharacter
#Descriptive
#ContraryToMorality
#AcquiredDistinctiveness
