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Trademarks Relative Grounds For Refusal Of Registration.Docx Notes

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Intellectual Property Law Notes


3. Relative Grounds for Refusal of Registration Rule: Marks which conflict with earlier marks or signs may not be registered. This protects the earlier TMO, and safeguards the guarantee of origin. The relative grounds for refusal mirror provisions concerned with infringement.

Relation to 'Earlier Marks' Summary:

i. ii. iii. iv.

s.5(1) - the marks and the goods/services are identical. s.5(2)(a) - the marks are identical, the goods/services are similar, likelihood of confusion/association. s.5(2)(b) - marks are similar, goods/services are identical/similar, likelihood of confusion/association. s.5(3) - marks are identical/similar, earlier TM has a reputation, applicant's use would be unfair advantage/detriment. NB. s.4 concerned with 'earlier rights'.

? What is an 'earlier trade mark'??

S.6(1)(a), (b) and (ba) - Registered British/Community/international mark having effect (under the Madrid Agreement or Protocol) in one of the MSs with a priority date before the applicant's. If the registration of a mark falling within the first two categories has lapsed, the mark can form the basis of an objections for a period of one year after expiry. S.6(2) - Registrar shall not refuse to register the TM by reason of the earlier TM unless the use conditions are met.

? Does the opponent (or applicant for cancellation) have an appropriate interest to challenge?
Trade Marks (Relative Grounds) Order 2007: An opposition on relative grounds can only be commenced by a person who has a relevant interest in an earlier mark. In case of opposition to UK registration only proprietor of early mark can bring proceedings. However, a cancellation action can be brought by the proprietor or licensee of an earlier mark. Justified because a cancellation action may be by way of a counterclaim to infringement - would be unfair were it not possible for a licensee of an earlier TM who is accused of infringing a later mark to be able to challenge that mark.
? Has the earlier mark been used? S.6(3): Where an applicant for a mark is faced with an opposition on relative grounds on the basis of an earlier TM registered 5years+ previously, the applicant can demand that the opponent produces evidence of use of the TM within the past 5 years, or provides proper reasons for non-use. Otherwise the opposition is rejected.
---------------------------------------------------------------------------------------------------------------------------------------------S.5(1) Identical trade mark and identical goods (TMD Art. 4(1)(a); CTMR Art 8.(1)(a))

1 Intellectual Property Law Notes


Double Identity Test: Targets counterfeit products

1. Is the TM applied for identical to an earlier TM?

2. Are the goods/services for which registration is applied for identical with earlier TM?
= If yes; no need to prove anything further as earlier TM protected unconditionally. Assumed confusion will result.

1. When are marks identical? Most try to prove marks are identical because this avoids the provision of needing to prove confusion. Necessary to compare the representation of the earlier TM contained in the registration certificate. Comparison is between the earlier TM (as registered) and the sign in the applicant's application. Consider as whole: Issue: Are marks that are slightly different treated as identical? Cts construe narrowly as no need for confusion:Diffusion v. SA Sadas [2003]; Criterion 'must be interpreted strictly. The very definition of identity implies that the two elements should be the same in all respects'. There is identity between sign and a TM, from the view of the average consumer, 'where the former reproduces, without any modification or addition, all the elements constituting the latter'. 'Insignificant differences' may go unnoticed by average consumers.Websphere [2004]; On this test 'Web-Sphere' and 'WebSphere' were identical.Blue IP Inc; 'KCC HERR VOSS' is not identical to 'HERR-VOSS'.

2. When are goods/services identical?Discovery [2000]; If the earlier goods/services are broader so as to include the category of the applicant's mark they are identical, thus 'broadcasting services' were identical to radio broadcasting services.
- British Sugar [1996]; If the language needs interpreting look to the words in the TM specification. Ct had to decide whether 'cosmetics' including 'skin lightning cream'. Jacob J explained, instead of construing words literally, 'when it comes to construing a word used in a TM specification, one is concerned with how the product is, as a practical matter, regarded for the purposes of trade'. Not complete reliance on just the words.
---------------------------------------------------------------------------------------------------------------------------------------------S.5(2) Identical/similar trade mark and identical/similar goods/services (TMD Art. 4(1)(b); CTMR Art 8.(1)(b))


1. Is the TM applied for identical (s.5(2)(a)) or similar to the earlier TM (s.5(2)(b))?


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