21. Titles of other books or media

Date Published

Examiners should raise a ground for rejection under section 41 where a trade mark directly describes the potential subject matter of goods in class 9 and 16, or services in class 41.  This is because other traders may have a legitimate need to use the word/s as a description of the subject matter of their own goods or services.

A ground for rejection should not be raised where although the trade mark is indicative of particular subject matter it is sufficiently unusual that other traders will not need to use it to describe the content of their own goods or services.

The following table provides some illustrative examples:

Trade mark

Section 41

Reason

DIY RENOVATIONS

Yes

Indicates that the subject matter of the goods or services is ‘do it yourself’ renovations.

GARLIC DIET

Yes

Indicates that the subject matter relates to diets incorporating garlic as an important element.

SPORT & LEISURE

Yes

Indicates that the subject matter is sporting or leisure activities

KICKBOXING POWER

No

Although the subject matter is probably kickboxing, the term as a whole is allusory and one that other traders will not need to use to describe the subject matter of their goods and services.

THE WHIMSICAL WORLD OF GARDENING, CAMPING AND CYCLING

No

Although the subject matter is probably gardening, camping and cycling, the term as a whole is sufficiently unusual that it is unlikely other traders will need to use it.