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As Trade Mark Attorneys, one of the questions we are asked almost daily basis is whether new marks are registrable. As UK IPO practice is forever evolving, it can be helpful to conduct regular reviews of the kinds of marks being refused by the UK IPO. In the latest instalment of our seasonal round-up, we take a look at some interesting refusals of UK trade mark applications which issued in the first half of 2023.
Historical case law has taught us that registering marks for colours per se is notoriously hard it is notoriously hard to register marks for colours per se. Amazonen-Werke H. Dreyer SE & Co. KG, a German company specializing in the production of in agricultural machinery. They were reminded of the difficulties faced by many businesses before it when its application for the following mark was refused:
The application was filed along with the description ‘The trademark consists of a combination of the colours green (Pantone 77 42C) and orange (Pantone 1505C), horizontally separated; the support frame and the container are green; the top of the container (lid) is orange.’
The description was objected to under Section 3(1)(a) Trade Marks Act 1994 (“the Act”) for being imprecise whilst the mark was declared ‘devoid of any distinctive character’ under Section 3(1)(b) of the Act.
The UK IPO maintains that colours cannot be inherently distinctive and are therefore unable to distinguish goods o undertaking from those of others. This is an important reminder – the vast majority of marks on the register for colour per se have demonstrated that the colour, or combination of colours, has acquired distinctiveness by virtue of use over time. This allows the mark to function as an identification of the origin of the goods.
We note a similar mark was also filed by the same applicant in the EU and received a similar objection which the applicant appealed unsuccessfully. The applicant here argued that its use of the mark had led to acquired distinctiveness, however the EU IPO cited a number of competitors using similar colours on their products and maintained its assessment that the mark was not distinctive.
The application remains under examination on the UKIPO website and so it remains to be seen if the UK IPO can be persuaded that consumers now recognise these colours as identifying the applicant.
These are symbols safeguarded by international law to ensure proper use and prevent misuse, especially in humanitarian and military contexts. Misuse of these emblems can lead to confusion, misrepresentation, and even harm in conflict situations.
From an initial look, most Trade Mark Attorneys would struggle to agree that these marks are similar:
However, one of Poland’s leading technology providers, RENEX SPOLKA Z OGRANICZONA, found its application for the former mark was refused under Section 3(4) for being too similar to the latter, namely the protected emblem of the Red Cross. Under the Geneva Conventions Act 1957, such emblems are afforded a higher level of protection and therefore marks that may not be considered similar for the purpose of opposition or invalidity actions, can be refused by the UK IPO for too closely resembling the Red Cross.
From a review of various refusals on this basis, it appears the UK IPO is taking quite a wide stance on this matter issuing refusals against a number of marks coloured in pinks, oranges and reds in order to maintain protection of the Red Cross. Many people will be surprised to learn that the Geneva Conventions Act 1957 is very far reaching and that usual principles such as those governing similarity of goods and services and similarity of marks do not apply to protected emblems. This means that even if the goods and services you are trying to cover with your application are entirely dissimilar to those offered by the Red Cross, your application will still be refused. Likewise, arguments that your mark includes other distinctive elements which make it clear that the goods and services are offered by an entity other than the Red Cross will also be rejected as irrelevant.
Logos VS Plain words
Generally speaking, it can be preferable to file a plain word mark application over a logo as the plain word offers a broader scope of protection. However, when your mark is not particularly distinctive, it can be helpful to file an application for a logo in order to increase the likelihood of acceptance on the register.
Red Bull GmbH found this out when its application for THE APRICOT EDITION was refused under Sections 3(1)(b) and 3(1)(c) with the UK IPO arguing the mark is descriptive of a feature of the product and therefore not capable of serving as a trade mark. The application covered various beverages terms in class 32.
According to the refusal, the UK IPO took particular issue with the inclusion of the word ‘EDITION’ in the mark stating that it is common in trade to use the word “edition” along with a flavour to describe the version of a range of drinks. In order to support this, the UK IPO provided an Annex of goods that are described using the term ‘EDITION’. Interestingly, all the goods provided in this Annex where the word ‘EDITION’ is used in a descriptive manner are alcoholic spirits, which fall into class 33 but which are clearly comparable with beverages in class 32.
Although the refusal of the application has been finalised, perhaps Red Bull should consider a logo mark application for this mark?
Considering the recent refusals by the UK IPO, it’s evident that the path to successful trade mark registration isn’t always straightforward. From the intricacies of colour marks, as seen with Amazonen-Werke, to the subtleties of word versus logo applications highlighted by Red Bull GmbH’s experience, there are multiple challenges. The protection of emblems, especially the Red Cross, further showcases the depth of considerations businesses must be aware of. As these cases from the first half of 2023 have shown, a keen understanding of the UK IPO’s evolving stance is essential.
At AA Thornton, we’re well-versed in these complexities. Whether you’re considering a colour mark or navigating the intricacies of word versus logo applications, our expertise ensures you’re well-equipped to make informed decisions.
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