Relative Grounds of Refusal Hard Flashcards
Syllabus 7 (6 cards)
Relative vs. Absolute: What’s the core difference for trade mark refusal grounds?
Absolute grounds are inherent to the mark itself (e.g., descriptive, non-distinctive).
Relative grounds arise from the rights of others, based on conflict with earlier rights. The UKIPO examines applications on relative grounds.
What qualifies as an “earlier right” under UK trade mark law?
An “Earlier Trade Mark” (defined in TMA s.6) primarily includes:
A UK registration or application with an earlier filing or priority date.
An International Registration designating the UK with an earlier filing or priority date.
Applications for the above, provided they are eventually registered.
Post-Brexit, this also includes:
Comparable trade marks (UK marks cloned from registered EUTMs on exit day).
Pending UK trade marks based on pending EUTM applications on exit day.
Registered UK marks or IRs designating the UK converted from EUTMs (or IRs designating EUTMs) that had a valid seniority claim of an earlier UK registered mark.
These apply even if the earlier trade mark has been surrendered or expired.
“Earlier rights” also extend to:
Earlier non-registered well-known marks protected by the Paris Convention or WTO.
Earlier unregistered trade marks protected by a rule of law (like passing off), provided rights were acquired before the later application’s filing/priority date.
Other earlier rights like copyright, design right, or registered designs
When is the ‘use’ of an earlier registered mark required in relative grounds proceedings (Opposition, Invalidity, Infringement)?
In opposition based on an earlier registered mark, the owner must show genuine use in the five-year period ending on the opposed application’s filing/priority date. If not shown (and no proper reasons for non-use), the opposition may fail for relevant goods/services. Genuine use is by the owner or with consent, includes use in a form not altering distinctive character, or use for export. Proper reasons are external circumstances, not market conditions. This requirement is based on TMA s.6A.
In invalidity based on an earlier registered mark over five years old, proof of genuine use may be required for the five years up to the invalidation filing date or the five years prior to the contested mark’s filing/priority date, or proper reasons for non-use provided.
In infringement, non-use of the earlier mark for a continuous five-year period (where the owner knew of the later mark’s use and did nothing) can be raised as a defence (TMA s.11A). The defendant can request proof of use
What are the main relative grounds for challenging a trade mark application or registration?
Likelihood of Confusion: With an earlier registered mark. This occurs when the later mark is identical or similar to the earlier mark, used for identical or similar goods/services, resulting in a likelihood of confusion (including association) by the public. (TMA s.5(1), s.5(2), s.10(1), s.10(2)). Case law methodology is used to assess this.
Reputation & Unfair Advantage/Detriment: With an earlier registered mark that has a reputation in the UK. Use of an identical/similar later mark (for identical, similar, or dissimilar goods/services) can be blocked if it, without due cause, takes unfair advantage of, or is detrimental to, the earlier mark’s distinctive character or repute. (TMA s.5(3), s.10(3)).
Earlier Unregistered Rights: Conflict with an earlier unregistered mark protected by a rule of law like passing off, where rights were acquired before the later mark’s filing/priority date. (TMA s.5(4)(a)).
Other Earlier Rights: Conflict with other earlier rights like copyright, design right, or registered designs. (TMA s.5(4)(b)).
Agent Filing Without Consent: Where an agent or representative files the mark in their own name without the owner’s consent. (TMA s.5(6)).
How can an applicant or proprietor overcome a relative grounds objection?
Arguments & Amendments: Argue there is no conflict (marks/goods/services not similar enough, no confusion) or amend/delete goods/services to remove the conflict.
Consent: The owner of the earlier right can provide written consent to the registration of the later mark. This eliminates the risk of later opposition, invalidity, or infringement actions based on s.5 grounds. Reasons for granting consent vary, potentially including commercial arrangements, policing strategy, or avoiding non-use/invalidity actions against their own mark. (TMA s.5(5)).
Lack of Genuine Use: In opposition or invalidity proceedings based on an earlier registered mark, demonstrate that the earlier mark has not been put to genuine use for the relevant period and there are no proper reasons for non-use.
Acquiescence: If the earlier right owner knew of the later mark’s use for five continuous years and did not object, they may be prevented from acting (relevant in infringement or invalidity).
Challenge Earlier Mark’s Distinctiveness: In invalidity proceedings, argue the earlier mark lacked sufficient distinctiveness at the relevant date.
Which key legal provisions from the syllabus cover Relative Grounds?
TMA s.5: Relative grounds for refusal of registration.
TMA s.5A: Grounds for refusal relating to only some of the goods or services.
TMA s.6: Meaning of earlier trade mark.
TMA s.6A: Raising relative grounds in opposition in cases of non-use.
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EUTMR art 8: Relative grounds for refusal.
EUIPO 2/20 - V: Earlier rights in inter partes proceedings.
