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Chapter

Cover Intellectual Property Law

37. Absolute Grounds for Refusal  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

This chapter examines the ‘absolute’ grounds for refusing to register a trade mark as set out in section 3 of the Trade Marks Act 1994. It first looks at the reasons for denying an application for trade mark registration before analysing the absolute grounds for refusal, which can be grouped into three general categories: whether the sign falls within the statutory definition of a trade mark found in sections 1(1) and 3(1)(a) and (2) of the Trade Marks Act 1994; whether trade marks are non-distinctive, descriptive, and generic; and whether trade marks are contrary to public policy or morality, likely to deceive the public, or prohibited by law, or if the application was made in bad faith. Provisions for specially protected emblems are also considered.

Chapter

Cover Intellectual Property Law

41. Trade Mark Defences  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

This chapter is about the various defences that are available to a person who has been accused of infringing a trade mark under the Trade Marks Act 1994. A prominent limitation on the scope of protection, which operates defensively, is whether the defendant has made a legally relevant use of the mark. Besides this, the defendant is excused if the mark has been used (i) as the defendant’s own personal name or address, (ii) for descriptive purposes, or (iii) to indicate the intended purpose of a product or service. These three uses are subject to a proviso testing for whether the use has been in accordance with honest practices in industrial and commercial matters. Additional defences facilitate comparative advertising and permit parallel importation via the exhaustion of the trade mark owner’s rights upon first sale. The chapter concludes by considering how expressive interests and the freedom of expression are balanced against trade mark rights. It also reviews the defence of honest concurrent use.

Chapter

Cover Contemporary Intellectual Property

14. Trade marks 2: definition of a registrable trade mark, absolute grounds for refusal and invalidation, and revocation  

This chapter examines the definition of a registrable trade mark, absolute grounds for refusal or invalidation of a registered trade mark, the extent to which objections can be overcome through proof of distinctiveness acquired through use and the rules on revocation of a registered trade mark, both at national level for UK trade mark registrations and at EU level for the EU trade mark. It examines these issues looking at many different kinds of trade mark, from traditional work marks and logos to so-called ‘non-conventional’ trade marks such as three-dimensional product shapes, sounds, smells, colours, and position marks.

Chapter

Cover Contemporary Intellectual Property

14. Trade marks 2: definition of a registrable trade mark, absolute grounds for refusal and invalidation, and revocation  

This chapter examines the definition of a registrable trade mark, absolute grounds for refusal or invalidation of a registered trade mark, the extent to which objections can be overcome through proof of distinctiveness acquired through use and the rules on revocation of a registered trade mark, both at national and EU levels. It examines these issues looking at many different kinds of trade mark, from traditional work marks and logos to so-called ‘non-conventional’ trade marks such as three-dimensional product shapes, sounds, smells, colours, and ‘position’ marks. The chapter reflects evolving legislation at an EU level (particularly the EU’s 2015 trade mark reform package), a rich base of case law, and links to the the theroetical debates seen in Chapter 13.