Why Trademark Applications Fail: Common Grounds for Refusal

Applying for a trademark is a crucial step in protecting your brand, but many applications hit roadblocks along the way. Understanding the common reasons for refusal can help you navigate the process more successfully. Here are the key grounds on which trademark applications often fail:

1. Too Generic, Descriptive, or Non-Distinctive

Trademarks need to be unique identifiers of your goods or services. If your mark is too generic or simply describes the product, it won't be approved. For example, trying to trademark "Fresh Bread" for a bakery will likely be rejected because it's merely descriptive. Aim for creativity and distinctiveness to ensure your trademark stands out.

2. Too Similar to an Earlier Trademark

One of the most common reasons for refusal is similarity to an existing trademark. If your mark looks or sounds too similar to a previously registered trademark, it could cause confusion among consumers. Conduct a thorough search before applying to avoid this pitfall.

3. Scandalous or Against Public Policy

Marks that are considered scandalous, offensive, or contrary to public policy are not permitted. This includes obscene language, derogatory terms, or anything that could be deemed socially unacceptable. Keep your trademark professional and respectful to avoid rejection on these grounds.

4. Deceptive

A trademark must not be misleading about the nature, quality, or origin of the goods or services. For instance, if you try to trademark "Organic Honey" for a product that isn’t organic, it would be considered deceptive and thus, rejected. Ensure your trademark accurately represents what you are offering.

5. Containing the Name, Emblem, or Flag of a Place

Using the name, emblem, or flag of a country, city, or other governmental body can lead to refusal. Such symbols are protected to prevent misuse and misrepresentation. Avoid incorporating these elements unless you have explicit permission.

6. Containing the Likeness of a Person

Using the name or likeness of a person, particularly without their consent, is another ground for refusal. This includes famous personalities and private individuals alike. Ensure you have the necessary permissions if you wish to use someone’s likeness in your trademark.

Tips for a Successful Trademark Application

1. Be Distinctive: Create a unique and memorable mark that distinguishes your goods or services.

2. Conduct a Thorough Search: Check existing trademarks to ensure yours is not too similar.

3. Avoid Descriptive Terms: Go beyond simple descriptions and generic terms.

4. Stay Professional: Avoid any scandalous or offensive content.

5. Be Honest: Ensure your trademark is not misleading or deceptive.

6. Respect Protected Symbols: Steer clear of names, emblems, or flags of places without permission.

7. Get Permissions: Secure consent when using someone’s name or likeness.

By understanding these common grounds for refusal and taking proactive steps, you can increase the chances of your trademark application being approved and securing your brand’s identity.

What do you do when you're faced with a copycat?

Ever caught wind of someone copying your awesome brand?

No worries – we're here to guide you through the game plan!  Swipe through for easy steps and friendly tips on how to keep your brand shining bright. Let's dive in!

contact us

Company liable for copyright infringement after its employee installs unlicensed software

Inzign, a Singaporean medical device manufacturer was sued by American software company, Siemens Industry Software, after an Inzign employee installed an unauthorised version of Siemen’s NX software on an unused workplace laptop. The employee had used the CAD/CAM/CAE software on several occasions. The unauthorised use was discovered by Siemens through a built-in automatic reporting function in its software. Siemens then offered to allow Inzign to “legalise” the infringement by paying a license fee of SGD 79,587 (approximately USD 60,000) which the latter rejected.

In its suit, Siemens claimed SGD 259,511 (approximately USD 193,000) in damages as it contended that Inzign was directly and vicariously liable for copyright infringement.

The High Court found that while Inzign was careless in its management of the laptop and its supervision of its employees, it was not directly liable for copyright infringement as it had no knowledge of the infringing no practical control over the employee’s action. However, the Court did find Inzign vicariously liable for the acts of its employee, as there was a sufficient connection between their employment relationship and the infringing acts.

The Court also found the damages claimed by Siemens to be excessive and instead calculated the damages as SGD 30,574 (around USD 23,000) based on the licence fees that Inzign would have paid Siemens.

While the topic of copyright infringement and piracy policy may not sound like the most exciting subject matter for your next team building exercise, it is a crucial that businesses provide proper training and education to employees in order to avoid a potentially expensive infringement law suit.