Trademark [TMA]

Trademark [TMA]

1. (1) Introduction

   • Indicates trade origin of goods - necessary to distinguish between other businesses
   • Monopoly right - owner has exclusive right to use the trademark [s. 9(1)]
     • 3rd party will therefore be liable for using C's trademark, even if innocent infringement

2. (2) Registrability

   • (i) Does the mark fall within the definition [s. 1(1)]
     • Sign (anything that can be apprehended by the senses)
     • Capable of graphic representation
       • Must be clear, precise, accessible and intelligible, such that the scope of the owner's rights can be determined
     • Trade origin must be capable of being distinguished from its competitors
   • (ii) Are there grounds on which registration should be refused [s. 3]
     • Does it meet the definition [s. 3(1)(a)]
     • Does the mark have distinctive character [s. 3(1)(b)]
     • Is the mark exclusively descriptive of the goods/services provided [s. 3(1)(c)]
     • Is the mark customary in that trade [s. 3(1)(d)]
     • Failing the gounds under 3(1)(b-d) will not be fatal if the mark has acquired distinctiveness over time (i.e. the public has learned to read it as a trademark)
     • If the mark uses a 3d shape, must not resemble the nature of the goods themselves [s. 3(2)]
     • Must not infringe public morality/policy or be deceptive [s. 3(3)]
   • (iii) Are there grounds on which an existing trademark owner could object to registration [s. 5]
     • Are there identical marks already on the register for the same goods or services [s. 5(1)]
       • In which case confusion is assumed
     • If there is a similar mark, would this confuse the public [s. 5(2)] - consider:
       • Comparison of marks
       • Comparison of goods/services
       • Likelihood of confusion
     • Is the mark identical or similar to a mark previously registered that is for entirely different goods/services [s. 5(3)] - consider:
       • Reputation (do a significant part of the public know about the original mark)
       • Consequence (does the mark cause detriment to the original mark's distinctive character, detriment to its reputation, unfair advantage, etc.)
       • Applicant must prove they have due cause to use identical/similar mark
     • If the mark could be actionable under the law of passing off, cannot be registered [s. 5(4)]

3. (3) Registration Procedure

   • Apply to the Register at the IPO [s. 32-34]
   • Check trademarks journal [s. 37-38]
   • See whether application is opposed [s. 38(2)]
   • Post-registration
     • Must be renewed every 10 years from date of registration or will lapse [s. 42-43]
     • Becomes property right of owner - can now be assigned and security can be granted over it [s. 2] [s. 9] [s. 22]
     • Can be subsequently revoked (removed from the register) if not used for 5 years or loses distinctiveness by becoming generic - or if found that it should never have been registered in the first place [s. 46-47]

4. (4) Infringement [s. 10]

   • (i) Is C registered owner of the trademark
   • (ii) Has the trademark lapsed
   • (iii) Has the mark been used in the course of trade without the owner's consent [s. 9(1)]
     • Examples of use listed in s. 10(4)
   • (iv) Compare the original and potentially infringing marks and apply the relevant provision of s. 10(1-3)
   • (v) Defences
     • Statutory
       • Bona fide use of D's own name/address [s. 11(2)(a)]
       • Use as indication of characteristics [s. 11(2)(b)]
       • Use as indication of purpose [s. 11(2)(c)]
       • Use of earlier trademark in a particular locality [s. 11(3)]
         • Applies to small traders, whose prior rights the infringer could not have been aware of
     • Other
       • Confusion is unlikely/dissimilar marks
       • Argue C's original mark is invalid/should not have been registered
   • (vi) Remedies
     • Civil [s. 14-19]
       • Injunction
       • Delivery up
       • Damages/account
     • Criminal [s. 92, 94 & 95]