Building a brand means getting legal protection for your company’s name. Government offices often say no to trademark applications that don’t meet strict rules. This means business owners who aren’t ready can end up with legal problems, surprise letters from the office and big problems if they have to change their brand. Also, people who check trademarks look carefully at every application to make sure it follows the law. This helps protect customers and the people who already have brands. Knowing why applications get rejected makes your branding plan stronger and more protected.
Securing a registered trademark is one of the most crucial steps while building a recognisable brand. A registered mark under the trademark registry can provide you with all the exclusive rights for your brand logo; it will provide recognition in the public domain, preventing competitors from free-riding on your goodwill. However, submitting the application to the trademark office (such as USPTO, EUIPO or the Indian Trademark Registry) does not always guarantee a green card. Understanding the trademark refusal grounds can help applicants solve potential problems before filing an application.
Many applicants face continuous examination reports that have trademark objection or refusal grounds. To navigate the registration process effectively, brand owners must understand why trademark offices reject these applications and how to prevent this rejection.
Rejection Grounds
- Absolute Ground: Focus on the mark itself. Is it descriptive, misleading, generic or non-distinctive? The examiner raises these objections directly in your evaluation, which can lead to the rejection.
- Relative Ground: Focus on the external factors such as the market’s pre-existing brand. The examiner generally flags objections during the search reports; third parties often raise these objections during the formal trademark opposition hearings.
1) Absolute Grounds for Refusal: Intrinsic Defects in the Mark
Trademark offices will automatically refuse a trademark if its identity or similarity to a previous mark already present in the records, or if there exists the likelihood of confusion on the part of the public.
Lack of Distinctiveness
The fundamental requirement in any trademark is that it should be capable of distinguishing your goods and services from those of other undertakings. If the mark is simple and common, the trademark offices will reject it for “Lack of Distinctiveness”.
For example: The trademark registry rejects simple, unstylized letters and basic geometric shapes. Likewise, for example: Examiners refuse laudatory and generic terms such as “Quality Cleaner” or “Best Choice”.
Merely Descriptive Terms
A descriptive trademark tells people what a product or service is. It might say what it is made of or where it comes from. For example, a company that sells fruit might have a hard time getting the word “Fresh” as a trademark. This is because the word “Fresh” says what the product is.
The people in charge of trademarks might reject a name that’s too descriptive. This is because other companies might need to use the word to describe their own products or services. If a company has used a descriptive name for a long time, it might become special to people. In this case, the company has to show proof that people think of them when they hear the name. They have to prove that people associate the name with their business, the company that sells the product or service itself.
Functional Features Protected Symbols
A trademark registration cannot occur for a shape if that shape is strictly functional or necessary to achieve a technical result (e.g., the ergonomic shape of a wrench). Trademark registries automatically prohibit marks that incorporate national flags, state seals, or Olympic rings.
Geographical names
Trademark examiners usually accept the names of rivers, seas, lakes and mountains prima facie for goods unrelated to those geographic features. However, examiners will only register these river names when the applicant proves acquired distinctiveness.
Names of rivers, seas and lakes would not normally be acceptable as marks for fish or fish products. The names of mountains would not be acceptable as marks for agricultural produce. Some rivers flow through heavily industrialised areas, and they would not be acceptable; for example, “treated with Ganges water” is a Common expression. As regards oceans, the practice is to accept ATLANTIC and PACIFIC, for goods/services which are not directly relevant, and used in a fanciful manner.
Trademark offices evaluate a region’s reputation when reviewing desert names. For example, an examiner will not accept “SAHARA” for dates, nor will they grant any registration to “SURAT” or “Kalahari” for diamonds.
In respect of natural produce, population figures are not as reliable a guide to acceptability. Natural produce would include fresh vegetables, fruits, eggs, milk, cream, water and minerals but not processed foods or beverages.
2) Relative Ground for Refusal: Conflict with Rights
Identical Trademark
A mark is identical with the trademark where it reproduces without any modification or additions, all elements constituting the trademark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed for an average consumer. This will create confusion among consumers about the various brands.
Similarity of Marks
The law considers trademarks similar when one mark so closely resembles another that it is likely to deceive or confuse consumers.
- Phonetic Similarity(Sound)
Phonetic rejections occur when two brand names sound nearly or identically the same when spoken aloud, even when they are spelt completely differently.
For example: “T. Markey” vs. “Tee Marquee”
This trademark was rejected as consumers cannot tell the difference between the letter ”T” and “Tee” or “Markey” or “Marquee”.
- Visual Similarity (Appearance)
Visual rejection can occur when two marks might look virtually the same to the human eye, creating a matching visual impression through typography, or identical dominant design elements.
For example: “Adidas” vs. “Adidas”(or Abibas”)
This trademark was rejected as both logos share the same visual feature, making them look as though they belong to the same brand.
Likelihood of Confusion
For likelihood of confusion to exist, it must be probable; it is not necessary that actual confusion has arisen or should arise in the mind of the public, i.e. the average consumer.
The three most relevant factors in the examination of the trademark application by the office will usually be
- The similarities and differences between the respective trademarks,
- How distinctive the earlier mark is, and
- The degree of similarity between the respective goods and services.
For example, is “ Apex Athletics” vs. “ Apex Athlete” (both for sportswear)
General rules for comparison of marks
The general well-settled principles for comparison of trademarks are:-
- The trademark must be considered as a whole. It is not right to take a part of the trademark and compare it with part of the other trademark
- No meticulous or letter-by-letter comparison is required. Side-by-side comparison is not the correct test
- Comparison should be made from the point of view of a person of average intelligence and of imperfect recollection
- The overall structural, visual & phonetic similarity and similarity of the idea in the two marks and the fact as to whether it is a reasonable likelihood to confuse should be taken into account.
The trademark applied for registration is not registrable under Section 11(1) of the Trade Marks Act 1999 since identical or similar marks in respect of identical or similar description of goods or services are there on records and because of such identity or similarity of marks and goods or services there exists a likelihood of confusion on the part of the public.
Conclusion
Registering a trademark is a job. You need to have a plan to do it right. First, you need to pick a name for your brand. This name should be strong and not describe what your brand does. This helps you avoid problems when you apply. You should also do a lot of research to make sure your name is not too similar to other names. This means looking at how the names sound and look.
If you do not do this research, you might have to change your brand name. This can be very expensive. So it is a good idea to take your time and plan carefully before you apply for a trademark. This will help you save money and make sure your brand is safe.
For help with this, you can contact us at Intellect Bastion.
FAQ’s
1. What is the difference between an absolute and a relative ground for trademark refusal?
When we talk about grounds, we are looking at the internal flaws of a trademark. This means we check if the trademark is descriptive or generic. On the other hand, relative grounds look at external conflicts. Here we see if the trademark clashes with trademarks that are already in the registry. We have to check if the new trademark’s too similar to the ones that are already registered. This is what relative grounds are about: checking for conflicts with existing trademarks in the registry.
2. Can a generic or purely descriptive word ever be registered as a trademark?
Trademark law does not allow the registration of generic terms, regardless of the circumstances. When examiners refuse registration of descriptively generic terms, they continue to accept such terms for registration if distinctiveness is proved. If the examiner is happy with your statement, the mark will not be rejected.
3. What does it mean if a trademark is rejected for a “likelihood of confusion”?
The trademark examiner believes that consumers will confuse different goods and services in the market if the marks share visual, phonetic, or conceptual similarities that reduce their distinctiveness.
4. What are the most common mistakes that lead to an immediate trademark rejection?
Many applicant often fears that their mark might get rejected in the initial examination. This often occurs when the applicant has selected a descriptive or generic brand name. They have not conducted any Trademark searches before the registration, Incorrect classification according to the NICE classification, and, lastly, submitting poor-quality design specimens for the logo, which is blurred and clashes with third-party artwork.
5. If my Trademark is rejected, do I get my filing fees refunded?
No. Trademark filing fees paid to the government offices are completely non-refundable regardless of whether the mark is granted or rejected. That’s why it is very crucial for the applicant to learn about the prior trademarks and the ways through which they can safeguard their logos from rejection.
6. How long do I have to respond if the trademark office issues a refusal or objection letter?
It depends on the country. In India, it ranges between 1 and 3 months (with the option to extend); the applicant must keep a close eye and response timely whenever trademark registry releases any kind of examination reports.
7. What is the difference between a trademark opposition and a trademark refusal?
A refusal is issued by the trademark registry when the examiner is not satisfied during the examination phase. An opposition can occur later in the process, during the public publication window, when a third-party competitor files a challenge against your mark.
AUTHOR: Shubhra Pandey
