The Unpredictability of Trade Marks

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This is a blog we wrote a few years back on trademarks, but explains relevant principles still true today about the nature of trademarks and the varied approaches registries may take when examining them. Registries are not required to implement the decisions of their colleagues which can often lead to slightly unpredictable results as shown below.

Trademarks are never black and white. As far as registering a mark, there are often surprises once the application is reviewed by the Intellectual Property Office (IPO). For example, Jeremy Phillips reported on this trade mark which amazingly passed through the examination stage. This says everything about the unpredictability of the trademark process.  The mark is not very distinctive as evidenced by the amusing letter featured on Jeremy’s blog.  It is difficult to see how this word can function as a badge of origin, and therefore be registerable, and yet The Village Vet was rejected.  Even more surprising is that the owners of MyGP already successfully registered MyDentists here.

Although it is possible to register the most non-distinctive marks if combined with a distinctive logo, MyGP has passed through as a word mark.  This means that the proprietor can object to others using these words by claiming that use of the words causes confusion in the minds of the consumer.

Our experience is that trade mark registries tend to oppose many a mark, far more distinctive than MyGP, and there is no way of knowing in advance whether an objection will happen.  What is worse is that trademark applicants can not plead that a similar name has been approved in the past as a basis to argue and convince the examiners to use their discretion to let their application through. So in the end it is the registrant of the mark that faces having their applications refused, or spending heavily to appeal any objections.

Anticipating how an examiner will treat an application can be evaluated by guidelines and the law itself, but there are certainly rejected applications which do appear to have the necessary quality of registrability.  Check through the list of refusals, and comparing them with successfully examined applications, such as MyGP, gives the impression that the chances of success in registering a trademark may very well depend on the examiner, and even their mood on that particular day!

Our own recent experience in registering trademarks in the European registry has led to a similar conclusion. It is also interesting to see how trademark owners differ in what they think their trademark entitles them to do. Some trademark owners consider their mark to give them a wider scope to prohibit others whereas other trademark owners may adopt a more relaxed stance. This is recognisable from the types of oppositions we’ve seen, where in some cases the application impinges very little on the earlier mark.