Trademark

Tags: law

a mark or device usually attached to goods or services which indicates a connection between those goods or services and the trade mark owner.

Use	Meaning
Origin	Tell consumers where goods come from.
Guarantee	The consistency of quality/safety.
Product Differentiation	Lets consumers differentiate brands.
Advertising Function	Protects against free-riding (use of a trademark by someone else) or dilution (lowering quality) of reputation

Examples of Trademarks

Brand Names
Symbols/Logos
Shapes (coca-cola)
Slogans
Sounds
Color Scheme (very hard)
Celebrity's image (Can't be registerd)

Protection

See [see page 15, here] for difference in the kinds of protections offered.

Registration

Governed by see page 4, TMA.

A trade mark is registers for 10 years and can be renewed every ten years. Failure to use a trademark for a continuous period of 5 years is sufficient to have it revoked.

Registered trademarks have property rights.

To be [see page 6, registered] a trademark must possess:

A **sign** which is capable of **graphic representation** (to be written in the registration papers) and which is capable of **distinguishing** by any of the five senses.

There must also be no objections to the application under the absolute grounds for refusal.

The mark must be inherently distinctive. Consumers can tell it's a trademark without first being educated on it. Can the consumer distinguish whether they like or dislike something based on it's trademark?
Cannot register a 3D shape if it comprises a substantial part of the product. Essentially, you can't trademark a product. Trying to trademark a substantial part of the product is considered the same.
Contrary to public policy, law, deceptive or in bad faith. Example making a logo which is very similair to CocaCola but isn't. If this logo can be mistaken for an existing trademark than the application can be rejected.

A registration can also be rejected if any prior rights exists under relative grounds of refusal. Such as if the mark conflicts with an earlier trademark and influences reputation. I.E. VISA fought an application to register VISA as a condom trademark because it would confuse the consumers of the two products.

Unregistered Protection

[see page 9, No-one] has the right to represent (pass of) his goods as the goods of somebody else, even if the infringed party hasn't trademarked their goods.

To pass of a trademark, it must be shown that:

Reputation/Goodwill exists on the trademark and is [see page 11, protectable].
[see page 12, Misrepresentation] by the infringing party which causes confusion in consumers.
Claimants goodwill has been (or could've been) see page 13, damaged.

Violation

A [see page 7, violation] of a registered trademark is considered when the infringing mark:

is used in the course of trade
is used in respect of goods or services
Affects or is liable to affect the functions of the trademark
Is used without consent of the registered TM owner

Defences

Consent for use was given
Conflicting TM on register exists
TM is no longer distinctive (eg. aspirin)
Descriptive use (This PC uses windows, here's a window logo)
Mark was used outside of functions of a trade mark.
Comparative advertising (eg. British Airwats vs Ryanair, Nintendo vs Sega)
Concurrent rights to TM exist (I've used it just as long as you)

Remedies for a Violation

Damages
Account of defendants profits from TM misuse
Destruction of infringing articles
Inhibitory injunction.