Grounds for refusal to register a mark for goods and services
Registration of a mark for goods and services or, as it is also called, a trademark (TM) requires prior meticulous preparation for which you need not only to pay a fee and comply with the formal requirements for materials submitted to Ukrpatent.
Recently, the Neofelis Lo Group Law Firm has been increasingly approached by clients who have previously applied independently, but have been denied registration. As a result, the long waiting time for registration and the disproportionate amounts of fees paid, which are not refundable in case of refusal, proved futile. After gaining such experience, customers no longer take risks and seek help from us.
An analysis of the reasons for the refusal revealed that the applicants had not complied with the requirements relating to the TM image itself. Such requirements are not clearly spelled out in the legislation, but are set out in the form of general rules, the content of which can be understood only by knowing the latest practice of appealing refusals to register TM. And you don’t have to have the bitter experience of not registering.
In this article we will analyze the most typical grounds for refusal to register a TM and provide recommendations on how to avoid refusal in certain cases.
Previously submitted or registered identical or similar to the degree of mixing of TM.
Current legislation does not allow the registration of a mark that is similar in appearance and identical in classes of the ICCP. For example, you apply for registration “MkDonald’s”, which is only one letter different from the already known TM “McDonald’s”, but this is enough to mislead the consumer.
However, not everything is so categorical, because the similarity is manifested in the presence of two concomitant factors: the identity of the image of the mark with the existing one and its registration for the same class (s) of the ICCP. Therefore, it is enough to choose other than those for which a similar mark has already been registered, ICTP and “voila” – your application is outside the risk of rejection.
However, we recommend not to neglect open access to the State Register of Certificates of Ukraine for marks for goods and services and pre-check the key elements of the mark submitted for registration and the relevant classes own mark for similarity already registered in the register of TM.
The recent practice of appealing against refusals to register a TM also provides additional tools for registering an identical or similar to an already registered TM, namely obtaining consent from the owner of an already registered TM to register a TM to which remarks were made regarding its identity or similarity.
The designation has no distinctiveness.
Distinctiveness is characterized by the presence in the designation of certain individual characteristics by which the consumer has the opportunity to distinguish the goods or services of one person from між among the same goods or services of others, as well as to obtain certain information about the goods or services and the person offering or providing service. This applies to cases where the TM consists of a single letter or number, a simple geometric figure.
To avoid rejection in such cases, you should use the services of logo developers to give your mark a distinctive stylized font or graphic design, and then there will be no problems with registration.
If your TM is still found to be non-distinctive, an additional argument in your favor may be the presence of evidence of prolonged and intensive use of the designation until its registration.
The sign is descriptive.
Descriptive may be a TM, which consists of symbols or data that are generalizing to the list of goods and services set out in the application or indicate the type, quality, composition, quantity, properties, purpose, value of goods and services, place and time of manufacture or sale of relevant goods or services.
An important criterion of descriptiveness is the first visual perception of the designation, which should create the impression that the TM indicates a product or service or all or some of its properties.
For example, Ukrpatent refused to register the designation “PUBLIC PROCUREMENT” because the services declared under classes 35, 36 and 42 may be the subject of public procurement, and part of the services of class 35 related to administration, mediation and information in the field of business may have the purpose of ensuring the public procurement procedure.
In such cases, the TM may be registered if the descriptive elements used in the TM do not occupy a dominant position or if the designation evokes an idea of the goods produced through associations or only indirectly characterizes the product or service.
The designation is contrary to public order and moral principles.
For example, Ukrpatent refused to register the CONTRABANDA mark on the grounds that the goods and the provision of services using the claimed designation would be mediated by smuggling propaganda. Particular attention was paid to the fact that the pictorial element of the claimed designation in the form of a guitar case in which the bottle is hidden, reinforces the idea of the semantic meaning of the verbal element “CONTRABANDA” and symbolically illustrates one of the illegal methods of smuggling – transportation and concealment one product (smuggled) under the guise of another.
All elements of the claimed designation were recognized as giving them specific meaning and endowed with a certain thematic content that promotes smuggling and smuggled goods, creating a common positive image, downplaying the seriousness of the relevant illegal activities and manipulating ideas about the moral categories of good and evil.
Therefore, it is recommended that if you plan to use a verbal element in TM, then avoid those words or phrases that have a negative color and symbolize objects or phenomena that contradict public order and principles of morality, and even more so their combination with graphic elements that enhance the semantic meaning of the verbal element itself.
There are many more reasons for refusing to register a TM, which confirms that the process of TM registration should not be considered formal. When registering a TM, it is worth knowing and taking into account many nuances in order for such a procedure to be successful.
It is impossible to predict the decision of Ukrpatent in advance, but already at the stage of filing the application you can avoid many reasons for refusing to register the TM. To this end, it is necessary to conduct a preliminary assessment of the possible reasons for refusal before submitting the application.
Consult on TM registration issues; to assess the similarity of the submitted for registration of TM with already registered or those that are under consideration by Ukrpatent; You will be able to select classes in accordance with the 11th edition of the ICCP and obtain a fully completed and submitted package of documents by contacting the Law Firm “Neofelis Lo Group” according to the contact details below.
Lawyer Kateryna Bezhanova
Lawyer Natalia Zhurok
Phone: + 38 (050) 471-77-71