Short summary on why a trademark registration may be refused with examples of refused marks.
The purpose of a Trade Mark is to distinguish goods or services between traders and make them identifiable as originating from a particular source. Trade mark legislation lays down a number of rules and conditions that must be satisfied before a trade mark may be registered.
In order to prevent an owner from unfairly obtaining a monopoly a Trade Mark will be refused registration in the following circumstances:
• The mark is descriptive of goods or services.
• The mark consists of customary words.
• The mark is non- distinctive.
• The mark is laudatory.
• The mark may conflict with an earlier registered mark.
Famous Trade mark Registration failures
Harley Davidson
The sound of a revving engine.
WALMART
The yellow smiley face (that has been in use for over the last 40 years
Gareth Bale (Footballer Tottenham Hotspur)
The heart shaped hand gesture he uses when celebrating a goal.
Donald Trump
The term ‘you’re fired’ in relation to the US version of the Apprentice.
CHANEL
The designer Coco Chanel in their attempted registration of the word ‘Jersey’ faced fierce opposition from inhabitants of the Channel Islands, the senator of Jersey commented the opposition was in relation to ownership of the name and not to stop Chanel from using the name.
Walt Disney
The Spanish equivalent of ‘Day of the Dead’ (a Mexican holiday), was faced with a petition with over 21,000 signatories generated in the space of a day.
The name SEAL Team 6, (the name of the navy team that killed Osama Bin Laden) Disney attempted to register this just two days after the killing and had proposed to use the mark on children’s toys and games??
If you would like further information on registering a mark, just click this link!
Trademarkroom.com is the sister company of Lawdit Solicitors and files trade marks throughout the world. Michael Coyle is a Solicitor Advocate and MD of Lawdit.
Lawdit is the brother to Trademarkroom.com and handles the firm’s oppositions when instructed by the team at Trademarkroom.com
He can be contacted at michael@trademarkroom.com or michael.coyle@lawdit.co.uk
Anna Orchard
