Relative Grounds For Refusal
Relative Grounds for Refusal – UK Trademark Law
Legal Basis:
Relative grounds for refusal are set out under Section 5 of the Trade Marks Act 1994 (TMA 1994). They focus on conflicts with earlier rights rather than the intrinsic qualities of the mark (which are “absolute grounds”).
A UK trademark application may be refused if it conflicts with an earlier mark, meaning:
The mark is identical or similar to an earlier registered trademark.
The goods or services are identical or similar.
There is a likelihood of confusion among the public.
It may take unfair advantage of or be detrimental to the reputation of an earlier mark (under Section 5(3)).
1. Likelihood of Confusion – Identical or Similar Marks
Legal Basis: Section 5(2)(b) TMA 1994.
Explanation:
If the mark applied for is identical or similar to an earlier trademark and is applied to identical or similar goods/services, it may be refused if there is a likelihood of confusion, including association with the earlier mark.
Key Case Laws:
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117
Facts: Canon applied to register a mark that was visually and phonetically similar to MGM.
Held: The court emphasized the global appreciation of the mark by the average consumer. Marks that are similar in appearance, sound, or concept can lead to confusion.
Significance: Established principles for assessing similarity of marks and goods.
Sabel BV v Puma AG [1998] ECR I-6191
Facts: Sabel challenged Puma’s mark, claiming it was too similar.
Held: The European Court of Justice confirmed that likelihood of confusion includes the possibility of association; even if consumers do not mistake the marks, they may link them.
Significance: Forms the core framework for Section 5(2)(b) refusal in the UK.
Liverpool Gin Distillery v Sazerac Brands LLC [2020] UKIPO
Facts: Dispute over the mark “Liverpool Gin” and its potential confusion with an earlier “Sazerac” mark.
Held: The UKIPO analyzed visual, phonetic, and conceptual similarity and concluded that even minor similarities could lead to association.
Significance: Practical application of likelihood of confusion for modern UK trademarks.
2. Well-Known or Reputation Marks – Section 5(3) TMA 1994
Legal Basis: Section 5(3) protects marks with a reputation against dilution, tarnishing, or taking unfair advantage, even if goods/services are dissimilar.
Key Case Laws:
L’Oréal SA v Bellure NV [2008] EWCA Civ 364
Facts: Bellure sold perfumes similar to L’Oréal brands.
Held: Even without confusion, Bellure took unfair advantage of L’Oréal’s reputation.
Significance: Shows Section 5(3) protects marks against exploitation beyond direct confusion.
Intel Corporation Inc v CPM United Kingdom Ltd [2009] EWCA Civ 1037
Facts: CPM tried to register “INTELMARK” for unrelated goods.
Held: Intel’s mark had a strong reputation; CPM’s use could take unfair advantage of that reputation.
Significance: Clarifies the application of Section 5(3) for marks with global recognition.
3. Earlier Rights Beyond Registered Marks
Legal Basis: Section 5(4)(a) TMA 1994 allows refusal based on earlier unregistered rights (passing off).
Key Case Laws:
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 (“Jif Lemon Case”)
Facts: Borden sold lemon-shaped containers similar to Jif Lemon.
Held: Although unregistered, Jif Lemon had goodwill, and Borden’s actions amounted to passing off.
Significance: UKIPO can refuse trademarks that would infringe earlier unregistered rights.
Erven Warnink BV v Townend & Sons Ltd [1979] AC 731 (“Advocaat Case”)
Facts: Townend sold a liqueur similar to Warnink’s Advocaat.
Held: Even without registration, there was passing off, protecting the mark’s reputation.
Significance: Reinforces the principle that unregistered marks with reputation are protected under Section 5(4).
4. Comparative Assessment of Similarity
Explanation:
Assessing relative grounds requires comparing marks and goods/services:
Marks: Visual, phonetic, conceptual similarity.
Goods/services: Identical, similar, or related categories.
Consumers: Average consumer’s perception, considering attention level and buying context.
Case Law Example:
O2 Holdings Limited v Hutchison 3G UK Limited [2006] EWCA Civ 1292
Facts: O2 challenged 3G’s mark “3” for mobile services.
Held: Despite numerical simplicity, context and reputation were key. The public might associate or be confused.
Significance: Demonstrates careful evaluation of similarity in high-reputation brands.
5. Use of Marks in Keywords / Internet Advertising
Explanation:
Section 5 grounds also apply in online and keyword disputes, especially with trademarks used as Google Ads.
Case Law Example:
Interflora Inc v Marks & Spencer plc [2014] EWCA Civ 1403
Facts: M&S used Interflora’s mark as a keyword.
Held: Not direct infringement under Section 5(2), but reputation-based issues (Section 5(3)) could arise in other contexts.
Significance: Highlights modern application of relative grounds to digital marketing.
Summary Table of Relative Grounds
| Ground | Legal Basis | Key Case | Principle |
|---|---|---|---|
| Likelihood of confusion | S5(2)(b) | Canon v MGM | Compare marks/goods; confusion includes association |
| Reputation / Dilution | S5(3) | L’Oréal v Bellure | Protects strong marks even for unrelated goods |
| Unregistered rights | S5(4)(a) | Jif Lemon / Advocaat | Passing off prevents registration of conflicting marks |
| Similarity assessment | S5(2) | O2 v Hutchison | Visual, phonetic, conceptual similarity; consumer perception |
| Internet / keywords | S5(2), S5(3) | Interflora v M&S | Trademark use online may raise issues of confusion or reputation exploitation |
Key Points for Research:
Relative grounds focus on earlier rights, not the mark’s inherent qualities.
Likelihood of confusion, reputation, and passing off are core concepts.
Courts use a global appreciation test: overall impression, similarity, and context.
Digital and international contexts are increasingly important.
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