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Rights Protecting Brands Notes

LPC Law Notes > Commercial and IP Notes

This is an extract of our Rights Protecting Brands document, which we sell as part of our Commercial and IP Notes collection written by the top tier of Cambridge And Oxilp And College Of Law students.

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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)

Factor

Compare mark applied for (the sign) against already registered

Compare goods/services applied for against already registered

Double identity

Identical

Identical

Likelihood of confusion

Identical

Similar

Likelihood of confusion

Similar

Identical/similar

Reputation in UK and unfair advantage or detriment

Identical/similar

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