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A trade mark will not be registrable if it falls foul of any of the absolute grounds, and some specific problems may be encountered.
Section 3 of the Trade Mark Act 1994 sets out the absolute grounds for refusal of registration. If a trade mark cannot satisfy these requirements, it will be incapable of registration. Broadly put, the requirements are as follows:

A trade mark must be capable of graphic representation (section (a)).

A trade mark must have a distinctive character (section 3(1)(b)).

A trade mark must not be descriptive. For example, it must not be descriptive of the kind, quality or geographical origin of the product concerned (section 3(1)(c)).

A trade mark must not be customary in current language or in the established practices of trade (section 3(1)(d)).

Furthermore, there are specific requirements that are applicable to shape-marks (section 3(2)), and a trade mark will not be registrable for a number of other reasons, including if it is contrary to public policy or is deceptive (section 3(3)).

In relation to points (ii) – (iv), even if a trade mark falls foul of these provisions, if it can be demonstrated that the trade mark has acquired distinctiveness through use before the date of application for registration, then it will in fact be capable of registration.

The requirement of graphic representation has given rise to some interesting litigation. Traditional marks (for example those consisting of a combination of words, letters or numbers) will encounter no real difficulty in meeting this requirement. However, in the case of non-traditional marks (for example scents, colours and sounds) it will often be difficult to provide an adequate graphic representation.

The most important case on this issue is that of Sieckmann v Deutsches Patent-und Markenamt, Case C-273/00 [2002], where it was held by the European Court of Justice (ECJ) that for a scent to be capable of graphic representation, it must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

This test is also employed by the ECJ in relation to other non-traditional marks such as sounds. Whilst it will not be theoretically impossible for non-traditional marks to satisfy the Siekmann criteria, in reality it will be extremely difficult. There have already been a number of cases (including Siekmann itself) where creative attempts have been made to graphically represent unconventional marks to no avail.

Thus, on the facts of Siekmann, a physical deposit, a written description and a chemical formula of a scent were provided. But the ECJ found that these representations were not sufficiently clear, precise, durable, objective and intelligible to be adequately represented on the register.