Intellectual Property Office
1. Foreword
The Trade Marks Act 1994 is largely derived from EU law (Directive 2015/2436). As a result, it is assimilated law under section 2 of the European Union (Withdrawal) Act 2018. In relation to the interpretation of such assimilated law, the case law of the Court of Justice of the European Union (CJEU) (including the General Court) issued before 1 January 2021 continues to apply, and is binding on the registrar, as assimilated EU case law under section 6 of the Withdrawal Act.
This guide is compiled from judgements and decisions from a variety of sources including, in particular, the Court of Justice of the European Union (CJEU), the General Court (GC), UK Courts and the Appointed Persons. Registry practice reflects and interprets current law, but just as the law evolves, so practice must change to take new factorinto account.
Occasionally an application referred to as an example to illustrate a point suggests that the decision regarding acceptability was not in line with current practice. Given the constantly changing significance of certain words, phrases or signs in general use, it may be decided in retrospect that a given mark should not have been accepted for registration. An expression of opinion relating to such marks is not intended to determineor affect the registrability of any mark or any rights arising under the Trade Marks Act.
It should be remembered that the practice stated in this guide should not be applied rigidly and without regard to the particular circumstances of the application. Each case must be considered on its own merits. An examiner should not disregard practice but the particular circumstances of a case may suggest that a departure from practice would be justified. See for example the comments made by the Appointed Person (Simon Thorley QC) in the appeal by Henkel KGaA (BL 0/152/01) against the refusal of the Registrar to grant protection in respect of an International Registration. In that decision, at paragraph 12, it says -
It must always be remembered that the Registry Practice is a guideline and nothing more. It is helpful both to the Registry and to practitioners, but it cannot absolve the registrars hearing officers, or me on appeal, from approaching each case on its own facts.
Where there are good reasons to depart from usual practice officers may do so. The reasons for departing from practice should be recorded on the application file either on the internal minute sheet or (if appropriate) in the Hearing Record.
2. Purpose of this guide
The purpose of this guide is to indicate to examiners the procedures to follow when examining a mark, and to give guidelines on registrability. Practice is determined by applying the judgements and decisions referred to above. The guide will set down how particular categories of mark should be examined by applying this guidance. It will indicate when objections should or should not be raised and give guidance, where possible, on ways of overcoming the objections, including the filing of evidence.
3. Practice, as determined by judgements and decisions of courts
The examination of marks for acceptability under the Trade Marks Act 1994 must be by reference to the provisions of that Act, taking account where appropriate of existing practice as laid down or endorsed by judgements and decisions in the Courts or tribunals referred to below.
Court of Justice of the European Union (CJEU).
The Trade Marks Act 1994 is largely derived from EU law (Directive 2015/2436). As a result, it is assimilated law under section 2 of the European Union (Withdrawal) Act 2018. In relation to the interpretation of such assimilated law, the case law of the Court of Justice of the European Union (CJEU) (including the General Court) issued before 1 January 2021 continues to apply, and is binding on the registrar, as assimilated EU case law under section 6 of the Withdrawal Act. Judgments made by the CJEU after that date are not binding, although regard can still be had to them.
However, the Supreme Court, the High Court of Justiciary in Scotland, and various appeal courts, including the Court of Appeal, are not bound to follow assimilated EU case law and have the power to depart from such judgments. Any decisions made on that basis are then binding on the registrar.
UK Courts
These decisions are binding on the Office.
Appointed Person
These decisions are not binding on the Office on points of law other than in the case being dealt with. However they are of persuasive value in considering similar cases. These decisions are published on the Office website under Hearings (Results of past decisions). Appointed Persons are experienced Intellectual Property Law practitioners who are appointed by the Lord Chancellor. They are an appeals tribunal to the Offices decisions. There is no right of appeal to their decisions.
Practice amendment notices
Practice amendment notices(PANs). These are internal guidelines and notices changing or clarifying practice. The contents of a PAN are published on the Office website to notify practitioners and the public under Practice Amendment Notices
Decisions of the Tribunal/Courts outside the UK
With the exception of judgments of the EU Court (see above), decisions of other national courts/tribunals are not binding on the Registrar, nor are they usually of particular persuasive value. Decisions of national tribunals/courts within the EU may be of persuasive value in determining the meaning of the EU (Directive) derived domestic legislation but they are similarly not binding. Even when the UK was a Member State of the EU, Laddie J. held in Wagamama [1996] FSR 716 that:
It would not be right for an English Court, if it is firmly of a different view, to follow the route adopted by the courts of another Member State simply because the other courts expressed a view first. The scope of European legislation is too important to be decided on a first past the post basis.
4.The Examination process
5.The Trade marks Act 1994
Examination covers what is known as Absolute Grounds and Relative Grounds. If a mark fails to satisfy the requirements under Absolute Grounds it may be refused by the Office. However, where earlier marks are drawn to the applicants attention under Relative Grounds this is not a reason for refusal. This shall be covered in more detail further on in these guidelines. The following table outlines the sections of the Act which will be used by the examiner when conducting the examination and whilst the list of provisions for refusing a mark appears to be quite lengthy it should be borne in mind that the majority of applications received by the Registry are accepted for registration.
| Section 1(1) | Representation of the mark. |
| Section 3(1)(a) | Signs which do not comply with the requirements. |
| Section 3(1)(b) | Non distinctive marks. |
| Section 3(1)(c) | Descriptive marks. |
| Section 3(1)(d) | Signs which are customary in trade. |
| Section 3(2) | Shape marks |
| Section 3(3) | Offensive or Deceptive marks. |
| Section 3(4) | Marks whose use is prohibited in the UK by enactment or rule of law relating to trade marks. |
| Section 3(5) | Marks specified or referred to in Section 4 below (Specially Protected). |
| Section 3(6) | Applications made in bad faith. |
| Section 4 | Specially protected emblems such as Royal arms, Royal crowns, representations of the Royal family, UK and other flags, Coats of Arms, Olympic words and symbols. |
| Section 5 | Earlier rights. |
| Section 41(2) | Series. |
5.1 Section 3
The purpose of a trade mark is set out in Section 1(1) of the Act:
In this Act a trade mark means any sign capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark is often described as being a badge of origin, its role, as the Act states, is toserve as an indicator to the customer of which provider the goods or services purchasedhave originated from.
There are a number of re