Deceptive trade mark applications

|

There is a wealth of law laying a foundation of what is and is not acceptable in the trade mark world, both in the UK and EU, and the details can be easy to overlook when filing an application alone. This article by the MIA’s intellectual property partner, Briffa, explains how in addition to lack of descriptiveness or a non-distinctive character causing a trade mark application to be refused, there is also the prohibition against deceptive trade marks to be aware of… 

Often objections relating to a lack of descriptiveness or a non-distinctive character are issued upon the examination of a trade mark application. Both of which are sure fire ways to cause an application to be refused or, at best, cause a substantial delay to the route to registration. Frequently, however, the prohibition against deceptive trade marks and the correlating refusals are overlooked.

The law is clear: trade mark applications that are likely to deceive will be refused. For example, the application for “LACTOFREE” was refused by the EU Intellectual Property Office (“EUIPO”) over concerns that the mark would lead consumers to believe that the goods were free from lactose. The EUIPO reasoned that if the goods being offered under the mark “LACTOFREE” did in fact contain lactose, the mark would be clearly misleading.

Generally speaking, both the UK Intellectual Property Office (“UKIPO”) and the EUIPO will not assume that an application has been filed with the intention of deceiving consumers. Further, they hold consumers in high regard and are of the opinion that we are not easily deceived.

That being said, the UK/EUIPOs are ready and willing to issue objections against deceptive trade mark applications. Although only when the wording of the goods and services specification, in conjunction with the mark, raises a presumption that a non-deceptive use of the application is not guaranteed. Therefore, with the right advice and a carefully drafted trade mark application it should be possible to either overcome an objection based on deceptiveness or ideally prevent one from being raised in the first place, saving time, money and delays.

If a specification is worded in a way that allows for non-deceptive use of the mark an objection should not be raised. A good example is a trade mark application for “BRIFFA VODKA”, if this mark was filed for use with “whiskey” it is almost guaranteed to receive an objection based on deception and would almost certainly be refused from registration. On the other hand, if the mark was filed for “alcoholic beverages” we would have a good argument that the application will not be used in a deceptive manner and all being well an objection should not be received or could be easily overcome.

Briffa has been successfully filing trade mark applications for over 25 years in both the UK, EU and across the world. If you are unsure whether your trade mark application will succeed or want some expert advice before filing your application, you can contact them.

Don’t forget that MIA members benefit from a free thirty minute consultation and special rates on all intellectual property and general commercial matters. Contact alice@mia.org.uk for the details if you’d like someone to ease your legal headache!

www.briffa.com