‘Academic’ Intelligence: An Overview of Trademark, Part One

Today’s article shall entertain a somewhat brief, yet, hopefully, sufficiently informative, discussion of yet another Intellectual Property (‘IP’) right; namely, the Trademark (‘TM’).

Unlike copyright, TM is a registered property right and, as such, is a ‘monopoly right’, id est, the owner can enforce it without having to prove subsitance whilst merely referring the third party to the register instead.

Also, as a property right, TM can be assigned or licensed, so long as it is made in writing (s. 24 (3) Trade Marks Act 1994 (‘TMA’) ) and the new owner (or licensee) registers himself as such on the register (s. 25 TMA).

An application for registering a TM needs to be filed with the Intellectual Property Office (‘IPO’).

In order for an application to succeed, several requirements need to be satisfied, namely (s. 1 (1) TMA):

There needs to be a sign which is capable of being represented graphically and distinguishing goods or services of one undertaking from those of other undertakings.

• A Sign

Anything that can be perceived by the senses (seen, heard, smelt, etc.) is considered a sign.

• Capable of Being Represented Graphically

Again, all of the above can potentially be represented graphically; so long as the representation is ‘clear, precise and understandable’, it should pass the test.

• Capable of Distinguishing Goods or Services

As an example, a soup in a can branded ‘SOUP’ will not be registrable as a TM because an average consumer will not be able to distinguish it from the other brands of soups in a can.

Further to the above, an application will be refused if it does NOT conform with any of the requirements in s.3 TMA, namely:

• If the criteria in s. 1 (1) TMA are not satisfied, the application shall be refused (s. 3 (1) (a) TMA)
• If the sign is devoid of distinctive character, the application shall be refused (s. 3 (1) (b) TMA)

Note that colours, for instance, will fail the above requirement unless they have obtained distinctiveness through USE. As an example, the green colour used on Heinz Beans cans has successfully been registered as a TM because, in time, people have come to associate it with the brand through everyday use of its products.

• If the sign is merely descriptive, the application shall be refused (s. 3 (1) (c) TMA)

As an example imagine a doctor who wants to register the name ‘The Private Practice’ as a TM for his newly opened private practice; such an application is bound to fail as the name is merely descriptive.

• If the sign is customary in the language or practice of the trade, the application shall be refused (s. 3 (1) (d) TMA)

For instance, an application to register ‘The College of Studies’ as a TM for a name of a school shall be refused.

• If the sign is against public policy, morality or is one of a deceptive nature, the application shall be refused (s. 3 (3) TMA)
• If an application has been made in bad faith, it shall be refused (s. 3 (6) TMA)

It is of utmost importance to note that, even if an application satisfies all of the above criteria, it can still be challenged by a third party on the grounds contained in s. 5 TMA (NB The IPO does NOT concern itself with s. 5 TMA; it must be invoked by a third party). If it is proved that there is a likelihood of confusion in that an average informed consumer might mistake the origin of the goods, then an application might still be refused.

The s.5 TMA requirements will, however, be discussed in more detail next week along with the criteria for establishing, as well as defending, a TM infringement claim.

In the light of the above, then, it must be noted that, even though registering a TM might present the applicant with some hurdles, once a TM has been granted, the owner has a monopoly right over the TM. Thus, as it will be demonstrated next week, he can readily enforce it against third parties in infringement proceedings.