Restrictions on registration
Whereas a mark may properly satisfy the statutory threshold requirements of graphical representation and distinguishing capacity it may still be disqualified from registration on statutorily stipulated absolute or relative grounds of refusal. These may be invoked or raised at the instance of the Registrar during substantive examination of the mark, when attacked by third parties during the opposition period prior to registration, or during revocation proceedings following the mark’s registration.
Absolute grounds for refusal
Absolute grounds of refusal relate to the inherent unregisterability of marks, the character and conduct of the applicant, marks applied for in bad faith or fradulently, and deceptive marks as hereunder highlighted.
Descriptive or laudatory marks: These serve in trade to designate or attribute the quality, quantity, value, intended purpose, geographical origin, mode or time of production of the goods or services or other characteristics of the goods or services to which they relate. By their very nature such types of marks are usually, but not necessarily, descriptive or laudatory such as “double bubble” or “dry white” or some other phonetic equivalent for wine products.
For this reason not only do such types of marks lack distinctiveness, but fall in the public domain in where other traders may justificably require their use in connection with their goods or services without encountering undue hindrances. As such, no single trader should be bestowed with monopoly over them.
However, descriptive marks may be registrable where it is sufficiently proven that as at the time of application for registration the mark had in fact acquired the capacity to distinguish it as a result of the use made of it.
Technically suggestive product marks: Envisaged hereunder are marks that consist exclusively of the shape, configuration, colour or pattern of goods where these are inevitably necessary to obtain specific results; or result from the nature of the goods themselves.
In consequence, perceived is that registration would have the effect of restricting others from the use thereof, hence the development and progress of industry. As such the same public policy grounds as that under refusal or registration for descriptive marks form the basis of refusal of registration or otherwise.
Bad faith or fradulent applications: An application for registration is deemed one made in bad faith or fradulently where its purpose is to block the registration of the mark by the true owner. The position is also the same where the applicant has no legitimate or bona fide claim to the proprietorship of the mark. The public policy objective being to protect the legitimate interests of the rightful owner of the mark from callous predators.
No bona fide intention to use the mark: Where it is manifestly clear that the applicant has no genuine intention to use the mark, registration would be refused. The obective being to avail the mark to other serious traders, hence promote the progress of commerce and industry. However, intention to use would be satisfied where the applicant is to use the mark through a body corporate yet to be formed but registration would be effected assignment of the mark to the formed entity.
Mora publicae/ public morality: Inclusive hereunder is any mark contrary to law, public policy or established moral principles. These grounds are strictly territorial in nature and scope as they are fluid in response eg. evolutionary genetics of a nation’s moral values, standards and cultural orientation. Envisaged here are marks which promote moral depravity, morbidity or degeneration . So too are those that promote criminal attitudes such as marks depicting “marijuana”, “pornography”, “satanism “ other “anti-social” symbols or connotations.
Inherently deceptive marks: These are outrightly refused registration by reason that the very rationale basis of trademark protection is its capability to distinguish and gurantee the identity of the marked goods or services to the consuming public by enabling them without any possibility of confusion to distinguish the goods or services of one undertaking from those of other undertakings.
Envisaged hereunder therefore are marks that mislead the consuming public about the instric character, quality or utility value of the goods or services. For, instance “Johnny Walker” or “Famous Grouse” as suggesting wines brewed in the UK when in fact they could be from Canadan breweries.
Convention country flags, armorial bearings, emblem: A mark which consists exclusively of or contains the national flag, armorial bearing or emblem of a Paris Convention country, or from a heraldic point of view is an imitation thereof and is debarred from registration except with the express written authority of that country within the meaning of article 6 of the Paris Convention on the Protection of Industrial Property (Paris Convention). This prohibition also extends to any official signs or hallmarks adopted by the country, and to names and abbreviations of international organisations .
Apart from seeking to protect the public from confusion as to the exsistence of a connection between the mark and the country or international organisation, this absolute ground for refusal seeks to protect the sovereignity and intergrity of the public institutions.
Relative grounds for refusal
Relative grounds of refusal relate to the conflict arising from likelihood of deception or confusion between marks sought to be registered and exsisting rights of other proprietors. In this regard a mark is deemed to likely to deceive or confuse where it is proven that the earlier mark has in fact acquired reputation in the related market.
The determination of deception or confusion: This entails undertaking a comparison of the marks with reference to their concept, sound and appearance, taking into account the general impression of their dominant or striking features as these are the most likely to be recalled by the consuming public as opposed to their precise details. In this regard, factors such as the dangers of deception or confusion arising from badly placed telephonic orders, badly written orders, careless pronunciation, the doctrine of imperfect recollection and category of consumers likely to purchase the products are crucial.
Ordinary marks: A mark which is identical or so similar to a registered trademark and applied for in relation to identical or similar goods or services would be refused registration unless the owner of the registered earlier mark gives their consent for registration of the later mark, or the marks have been used in the market in good faith by their respective owners – so called honest concurrent users. Such mark would similarly be refused registration where there is a prior application pending registration unless of course it is proven that the owner of the later new application has a superior right than that of the earlier applicant.
Well-known marks: As regards well-known marks the prohibition would be invoked whether or not the well-known mark is locally registered. The prohibition is so pervasive to encompass non-competing categories of goods or services so long as the use of the mark sought to be registered is likely to take unfair advantage or be detrimential to the distinctive character or repute of the well-known mark. This prohibition is made consistent with articles of the Paris Convention.