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LPC Law Notes Commercial and IP Notes

Trade Marks Notes

Updated Trade Marks Notes

Commercial and IP Notes

Commercial and IP

Approximately 100 pages

A collection of the best LPC Commercial and IP notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through twenty-nine LPC samples from outstanding students with the highest results in England and carefully evaluating each on accuracy, formatting, logical structure, spelling/grammar, conciseness and "wow-factor".

In short these are what we believe to be the strongest set of CLIP notes available in the UK this year. This collection of notes is fully updated fo...

The following is a more accessible plain text extract of the PDF sample above, taken from our Commercial and IP Notes. Due to the challenges of extracting text from PDFs, it will have odd formatting:

Intellectual Property Rights

Trade Marks

Basics:

  • Trade Marks Act 1994

  • S.1(1): any sign capable of being represented graphically; which is capable of distinguishing goods or services of one undertaking from those of other undertakings

  • Examples: music / small / logo / word

How to Register

  • A TM should be registered to acquire the IP protection [45 classes]

  • Some marks can be specifically excluded:

    • S.3(3)national emblems

    • S.3(5)Marks contrary to accepted principles of morality

  • Apply to UKIPO

  • Prescribed form – TM3 + Fee [200] [attach logo is necessary]

  • IPO sends filing receipt within 6 working days

  • Examination done and report sent to applicant within 15 working days

  • Mark is accepted

  • Mark is published in Trade Mark Journal for 2 months – [if objections are raised – extended to 3 months]

  • Registration Certificate issued [if no objections raised]

Can the client register:

Three limb test:

1. Is the mark capable of being a TM – S.1(1) definition
2. Is the mark refused under any absolute grounds [S.3]
3. Is the mark refused for any relative grounds [S.5]

S.1 Definition

Graphic representation
  • Clearly reproduced in 8cm by 8cm square in the TM Journal

  • Can the sign be drawn; written in words / numbers / symbols / described in very clear words

  • Problems: sounds / scents [using chemical formula symbols unlikely to work]

Can the TM distinguish the goods
  • Overlap with S.3 Absolute grounds

  • “Deliberately Innovative” – no distinctive character in 2007 case

S.3 Absolute grounds

S.2(1)(a) Sign does not satisfy S.1 requirements
S.2(1)(b)

Devoid of distinctive character:

  • It sums up the product of business too accurately [e.g. “Shine]

  • Use of personal name:

    • S.11[2] TMA = everyone entitled to use name freely – but this does not mean every name is capable of registering their name.

    • Personal signatures can work

    • Combine with address or other distinctive character

    • How common is the name [IPO approach to consider the facts area of use / scope of use / likely customer group]

    • Common names can acquire distinctiveness through use [e.g. Paul Smith]

S.2(1)(c)

TM is too descriptive: consists exclusively of signs / indicators of the goods themselves:

  • Protection against unfair monopolization of descriptive signs or indications

  • Friction Management Solutions” / Tastee-freeze / Weldmesh

  • Client should combine with a more distinctive method - Twiglets [not descriptive of the actual crisps product]

  • Words of quality or value – “magic / supreme” – NO

  • 2 words together:

    • “Babydry” = two words on their own could not be distinctive but put together created a unusual combination which was not common to the English language. Important that the word was in the reverse order from any common use [i.e. not dry-baby]. Contrast to Doublemint / companyline.

    • Companyline”: not allowed! Coupling together two such general words created nothing distinctive in the factual circumstance.

    • Courts said a “overall assessment of the expression was needed to ascertain whether it is descriptive or not”

    • Doublemint” = descriptive & ambiguous and therefore deceptive so count NOT be registered.

  • Marks suggesting graphical origin [Miss Swiss – name did not indicate the origin of the goods. Name was therefore deceptive].

Some names will need to be left available for other traders in the future

S.3(1)(d) Mark has become generic
S.3(2)

Shape!

Registering the TM for the shape of the goods / packaging!

  • shape cannot consist exclusively of:

  1. Shape which result from the goods themselves: e.g. Dyson / Vienetta [Registered design right is more appropriate]

  2. Shape of goods which is necessary to achieve a technical result:

Philips electronics [shape of razor heads could not be registered]

  1. Shape which gives substantial value to the goods

  • Focus on distinctiveness!

  • NB. If any of the above grounds (a-c) are proven the sign / shape can never acquire distinctiveness so can never be registered. It is a permanent block to registration.

S.3(3)

Public Interest Objections

  • S.3(3)(a) Contrary to public policy

  • S.3(3)(b) likely to deceive

S.3(6) Mark is made in bad faith

How to overcome the absolute grounds:

  • Evidence of use: building up goodwill so the public can begin to recognise the mark and associate it with the brand.

  • Applicant has to sent to Trade Mark Registry – evidence of advertising spend / turnover in goods / length of use

  • Should have at least 5 years of use

S.5 Relative grounds

These grounds must be raised by a party challenging the registration. The UKIPO will only look at S.1 and S.3.

  • S.5(1): Mark is identical; goods and services are identical with the goods and services for which the earlier TM is protecting.

  • S.5(2)(a): Mark is identical; goods / services are similar.

  • S.5(2)(b): Mark is similar; goods / services are identical or similar

    • For both (a) & (b): there must exist a likelihood of confusion on the part of the public [this includes a likelihood of association with the earlier TM]

  • S.5(3): where a identical, similar or dissimilar goods services use a identical or similar mark and the registration of that mark would be detrimental to the existing mark or create an unfair advantage for the applicant.

  • S.5(4): is the mark already protected by some other right. Is the use of the mark prevented by any rule of law? [e.g. passing off / UDR / RDR / Copyright]

The court’s approach to S.5:

  • Court will put themselves in the position of a reasonable, well-informed and alert customer, seeing the mark and having all the usual imperfections of recall of earlier marks that would be normal in such a person.

  • Identical = must be considerably the same [in terms of what they are; what customer is expecting to obtain]

  • Similarity of mark = the overall impression [paying attention to the distinctive and dominant features].

  • Similarity of goods = comparison of the use; the way the goods are sold; extent to which the goods compete.

Summary of S.5:

Goods and services ...

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