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Rights Protecting Brands Notes

LPC Law Notes > Commercial and IP Notes

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Rights protecting brands - Trademarks and Passing off Right
Trademarks Sources

What is a TM?

3 x systems: UK, EU, International Admin of Register: IPO Statutory: Trade Marks Act 1996 ('TMA'), EU Legislation
- badge of origin
- Offers distinctiveness - distinguishes trader from his competitors
- Monopoly right
- Elements of TM registration:
- representation of mark itself and
- specific of goods and services in relation to which the owner has exclusive rights to use the mark

Stage 1 - Registrability Overview (1) s.1 TMA - does mark fall w/in definition [see above]
(2) S.3 TMA - are there absolute grounds for refusal? [see below]
(3) S.5 TMA - relative grounds for an existing TM owner to object to registration of mark?
[see below]
S.1(1) 3 part definition S.1(1)
- a sign, which is
- Capable of being represented graphically and
- Capable of distinguishing goods or services of one undertaking from those of other undertakings Sign =
Capable of being represente d graphicall y=
Capable of distinguis hing goods =

An easy hurdle to clear. Second para of s.1(1) gives examples CJEU has held such a representation must be 'clear, precise, selfcontained, easily accessible, intelligible, durable and objective'

- Any signs can be distinctive naturally or by nurture (ie distinctiveness via use)
- No real difference between capability of distinguishing and distinctiveness

- s.3(1)(a) compliance w/s.1 - mark must fall w/in that stat definition
- S.3(1)(b)(c) and (d) [objections not mutually exclusive, any 1/more than 1 can be proved]
- S.3(1)(b) devoid of any distinctive character the more striking and fanciful the mark, the more likely it will not fall this hurdle
- S.3(1)(c) descriptive marks if a mark consists exclusively of a sign indicating type of goods and/or services it will not be registered. Q is whether the mark can be read as having a descriptive meaning which is not its only meaning. Eg doublemint not allowed
- S.3(1)(d) customary in the language or practices of trade q of fact, needs to be some evidence. Eg not being able to register green for a type of mint as is commonly used
- Proviso to s.3(1) applies to (b)(c) and (d), effect is to save marks which are distinctive thr/time as a result of its use as a TM ie acquired distinctiveness. IPO must be persuaded that (i) mark is used as a TM (not as eg a decorative or descriptive feature) (ii) Consequence of such use if that public has learned ot read it as a TM (and not just as eg simple deco)
- s.3(2) additional hurdle for shape marks 3D mark must not simply consist of shape resulting from nature of goods or a shape which is necessary to obtain a technical effect/result or gives substantial value to goods
- S.3(3) public policy, morality, deceptiveness
- S.3(6) applications made in bad faith

S.3 absolute grounds for refusal

Think about s.3 before advising a client who is making a new mark. If client already has a weak mark:
- is evidence of acquired distinctiveness available; and/or
- Could client give its existing mark a slightly different and more distinctive form eg. By incorporating an extra name or adding visual mark

Applying s.3

S.5 - Relative grounds for refusal Section

5(1) 5(2)(a) 5(2)(b) 5(3)


Compare mark applied for (the sign) against already registered

Compare goods/services applied for against already registered

Double identity



Likelihood of confusion



Likelihood of confusion



Reputation in UK and unfair advantage or detriment


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