The Unpredictability of Trade Marks

April 28, 2008

Trade mark law is never black and white.When it comes to registering a mark, there are often surprises once the application is examined by the Intellectual Property Office (IPO).

For example, Jeremy Phillips recently reported on this trade mark application which has amazingly passed through the examination process, and is currently being advertised.This says it all about the unpredictability of the trade marking process.The mark is quite non distinctive as is clear from the amusing letter featured on Jeremy’s blog. It is difficult to see how this word mark can operate as a badge of origin, and therefore be registerable, and yet The Village Vet was refused. Even more surprising is that the owners of MyGP have already managed to register MyDentists here.

While it is possible to register the most non distinctive of marks if it is combined with a distinctive logo, MyGP is being let through as a word mark.That means the trade mark owner will be able to object to others using these words by arguing that use of the words caused confusion in the mind of the consumer.

In our experience the IPO tends to raise objections to many a mark that are far more distinctive than MyGP, and there is no way of knowing in advance whether an objection is likely to be made.What is even worse is that trade mark applicants cannot rely on the fact that a similar name has been allowed in the past as a basis on which to argue and persuade examiners to use their discretion to allow an application. So, in the end it is the registrant of the mark that suffers, in sometimes having marks refused, or having to pay heavily to appeal IPO objections.

Predicting how an examiner will treat an application can only be judged by guidelines and the law itself, but there are certainly trade mark applications which are rejected which do seem to have the necessary quality of registerability about them. Check through the list of refusals, and comparing these against successfully examined applications such as MyGP gives a sense that the chances of success in registering a trade mark could very well depend on the examiner and even the mood of the examiner on that particular day!