What is Trademark
A trade mark is a sign which distinguishes the goods of a word, symbol, phrase, color, shape, sounds or packaging
Types of Trademark
Service mark
Product Mark
Collective mark-
Certification mark
Legislation Trademark
- Industrial and commercial property protection 1927
- Trademark Act 1963
- Trademark 1996
- Paris Convention for the Protection Of Intellectual Property (1883).
- The Nice agreement on the international classification of goods and services for the registration of trademark (1957).
- TRIPS (1995)
- The Trademark Law Treaty (1999)
- The Madrid Protocol 1989.
The European Union Intellectual Property Office (EUIPO)
based in Spain, offers a unitary trade mark right granting protection across the 27 countries of the European Union
International trade mark applications
can be made through the “Madrid System”, which is administered by the World Intellectual Property Organisation in Switzerland.
Requirement for a trademark
must be a sign
distinguishing the good from another persons own
capable of being represented
Trademark that can be registered
Smells ( Olfactory Smells) OR scents.
1.CTM Application No: 428870 = Smell of fresh cut grass.
Sieckmann v German Patent and Trademark office.
To meet the requirement of graphical representation it must meet certain requirement.
1. The mark must be Complete, Clear Precise.
2. it must be examined and be intelligible.
OR
1. Clear, 2. Durable, Must be Objective, Precise , intelligible.
Perfumes
- Perfumes will be hard to register, because of a smell can not be an attribute, nor a natural feature.
- In the US perfumes can be patented but the formula must be disclosed and limited for 20 years.
- Consider and copyright the perfume. (Lancome V Kecofa)
Must a trademark be registered to be protected
No a trademark must not be registered to be protected , as long as it has goodwill and reputation it will be protected in the realm of passing off.
Trademark History
England = Registration of trade mark- Trademark registration act 1875.
Ireland= industrial and commercial property protection Act 1927.
Trademark 1963 (separated trademark law from patent)
Madrid Protocol
Madrid Protocol . Registration can be challenged within the first five years, during the 5 years of the initial 10 years.
What type of mark can be registered
1) Sign that is capable of distinguishing goods.(s.6 of Trade mark Act 1996)
signs includes : Symbols, smells, Sound, Shape of goods and color.
Colors
S. 8 of the 1996 Act, distinctiveness to be assessed.
Registration allowed if the color uniquely identifies the commercial product.
WHAT IS SOUND TRADEMARK?
Shield Mark BV v Jost Kist.
- Short, distinctive sounds. That means that distinctiveness.
- the sound must be portrayed by images, lines or characters in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
- In the Us,
Refusal Of Trademarks.
- Absolute Grounds
* Relative Grounds.
Refusal on absolute Grounds
- S.8 of the 1996 Act
- devoid of distinctiveness( Ecopy Inc v OHIM( 2003)
- does not satisfy s.6(1) Act 1996
- consist exclusively of sign in trade
- consist exclusively of sign which have become customary language in a trade.
- Contrary to public policy
A sign shall not be registered if it consist of the following
- Results from the nature of goods themselves
- necessary to obtain a technical results.
- gives substantial value to the goods.
Refusal on relative grounds
- S..10(1) : A trade mark shall be refused if its identical to a previous trademark and Similar.
- Has a reputation to an earlier one
- By virtue of an earlier right.
- There exist a likelihood of confusion on the part of the public
- confusion as from the origin of goods and services.
Refusal on relative grounds falls into three categories.
- Double identity ( LTJ Diffusion V Sadas Vertbaudet S.A)
- There exist a likelihood of confusion( SABEL Bv V Puma AG). Test of Confusion & Similarity.
- Objection under s.10(3) on reputation
Duration of trademark.
AND
Revocation of Trademark
for a period of 10 years. s.51 Trademark Act 1996. * Not been put to genuine use. (Non-Use) * Been suspended for 5 years * Genericide *
DEFENCES
AND
REMEDIES
* Permitted usage Remedies. *Damages *an account of profit *an order of destruction of goods * an order of erasure * an order of disposal * an order of delivery up to the plaintiff.
