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As we move further into 2024, the UK IPO continues to demonstrate rigorous examination of trade mark applications. The first six months of the year have seen a string of refusals, particularly concerning attempts to register emblems that hold protected status. In this instalment, we continue to explore these cases, offering a closer look at the reasoning behind these decisions.
Jesus is keeping up with current trends and has entered the Metaverse- at least, that’s what BasicNet S.p.A.’s latest application leads us to believe. BasicNet applied to protect the sign ‘JESUS’ for a range of virtual and metaverse related goods and services in classes 9, 35, 41, and 42. This mark was refused on the basis that it ‘would be considered contrary to accepted moral values in the United Kingdom’. The UK IPO stated that the registration and subsequent monopolisation of the name ‘JESUS’ would cause great offence to a significant section of the general public.
This refusal might come as a surprise to many and is an example of how rejections under section 3(3)(a) of the Trade Marks Act are based on the cultural norms of the UK and can sometimes be unexpected. The mark ‘JESUS’ has been accepted for registration in other jurisdictions (including the EU), which shows that the mark has some inherent distinctive value. The mark ‘JESUS’ is also registered in countries like Mexico, where ’JESUS’ is a common name, demonstrating that it is important to closely consider a mark as it will be viewed by UK consumers regardless of how the mark is perceived in other territories. In many territories, the same sign might be more likely to receive an objection that the name is common and is, therefore, not sufficiently distinctive to be registered. However, the potential to cause offence renders it absolutely not registrable in the UK.
In our last iteration, we highlighted some marks that were refused for resembling protected emblems. Once again, we see the UK IPO clamping down on applicants who try to commercialise these protected emblems unfairly.
This time, we have seen refusals based on the Irish shamrock, which is afforded special protection under Article 6ter of the Paris Convention, and the “broad arrow”, which is listed in the First Schedule of the Public Stores Act 1875.
An application for this mark was refused for containing the broad arrow typically used to indicate property belonging to the British government
An application to protect this mark was refused for containing the protected emblem of an Irish shamrock
Whilst the Irish shamrock is likely to be instantly associated with Ireland by many people in the UK, we suspect only very few people realise it is a protected emblem and cannot be freely used by anyone, even if their business has close links with Ireland.
With regards to the application containing the broad arrow filed by FGF Industry S.p.A., the UK IPO initially accepted the UK publication. However, the Ministry of Defence submitted observations highlighting the history of the broad arrow and its protected status. As a result of these observations, the UK IPO issued a refusal under section 3(4) of the Trade Marks Act. Whilst third party observations are not usually accepted by the UK IPO, they will be considered if they draw the UK IPO’s attention to facts it was previously unaware of. The fact that the UK IPO was unaware of this protected emblem until the MoD filed submissions on the point demonstrates that public knowledge or repute of the protected emblem is irrelevant in the context of a refusal under section 3(4) of the Trade Marks Act.
These refusals highlight why it is important to engage trade mark attorneys and do your due diligence prior to developing a brand or filing a trade mark application. This is also an example of the UK IPO not always getting it right the first time and how third-party observations can lead the office to change its mind.
Do you have a PFP? Do you know what a PFP is? We were surprised to learn that it is a common abbreviation for Profile Picture. We suspect 9GAG SG PTE. LIMITED (owner of the social media website 9GAG) was well aware of this fact when it applied to register the mark in relation to virtual and NFT related goods and services, but the rejection of the application on the basis that the mark is a well-known abbreviation was likely unexpected.
This is not the first time we have seen the UK IPO refuse an application on the basis the mark is descriptive, even where that descriptive use is not immediately apparent and might not be that well known.
Tech landscape is fast paced and innovative, yet this refusal demonstrates how quickly new terms can adopt descriptive meanings as they become more widely used. It also highlights that these meanings don’t need to be universally known for an objection to be raised.
If you have any queries regarding this topic, or would like assistance creating or implementing an IP strategy, please contact Sarah Neil and Devyani Patel of our team.
Category: Latest Insights | Author: Sarah Neil, Devyani Patel | Published: | Read more
