Grounds of refusal
The absolute grounds of refusal are examined by the trademark authorities. The relative grounds of refusal are not examined in the majority of the countries except when somebody files an opposition in the given period after the trademark application was published. Please see details in the appropriate country law.
What are the absolute grounds for refusal?
Generally the following shall not be registered:
a) signs which do not conform to the legal requirements;
b) trademarks which are devoid of any distinctive character;
c) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
d) trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
e) signs which consist exclusively of the shape which results from the nature of the goods themselves; the shape of goods which is necessary to obtain a technical result; the shape which gives substantial value to the goods;
f) trademarks which are of such a nature as to deceive the public as to the nature, quality, geographical origin or other characteristic of the goods or service;
g) trademarks which are not suitable for registration for other reasons, such as trademarks which are contrary to public policy or to accepted principles of morality, which are religious symbols; which are not eligible for protection or are eligible for protection only with authorization under the Paris Convention and the competent authority did not approve the authorization.
Points b), c), and d) above shall not apply if the trademark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. Third parties may inform the authorities about the applicability of the above grounds by making observations after publication of the application. Upon request, the trademark shall be a posteriori declared invalid. The trade mark shall be also declared invalid if the application was made in bad faith.
All grounds are examined in respect of the given country only, so it is possible that a mark will be registered in one country and will be refused for an absolute ground for refusal in another state.
What are the relative grounds for refusal?
The trademark applied for shall not be registered:
a) if it is identical with the earlier trademark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trademark is protected;
b) if, because of its identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected; the likelihood of confusion includes the likelihood of association with the earlier trademark. “Earlier trade marks” means all registered trademarks (or trademarks pending registration), and brand names that are well known;
c) where it is identical with, or similar to, the earlier trademark and is to be registered for goods or services which are not similar to those for which the earlier trademark is registered, where the trademark has a reputation and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark. The common meaning of “reputation” is similar to being well known;
d) where an agent, representative or distributor of the proprietor of the trademark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action;
e) the trademark shall be also declared invalid if it is in violation of a copyright or a right to a name.
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