Absolute Grounds for Refusal
The Trademarks Act sets out absolute grounds for refusal
- not satisfying the basic statutory formula
- devoid of distinctive character.
Trademarks are also not permitted where it consists exclusively of signs or indications which may serve in trade to designate
- the kind,
- quality,
- quantity,
- intended purpose,
- value,
- geographical origin,
- time of production
of goods or of rendering of services or other characteristics of goods or services.
A trademark shall not be refused registration by reason of the above grounds (other than the first) if before the date of application, it has in fact acquired a distinctive character as a result of use made of it. The application requires evidence that the reputation has been built up. This may consist of marketing and established use over a prolonged period.
Trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade may cease to be distinctive
Relative Grounds of Refusal
There are so-called relative grounds for refusal of trademarks. The following is a summary of the more important.
A trademark shall not be registered if it would be identical to an earlier trademark and the goods or services for which the trademark is applied for are identical to the goods or services which the earlier mark is protected.
A trademark shall not be registered if
- it is identical to an earlier trademark and is to be registered for goods or services similar to those for which the earlier trademark is protected or
- it is similar to an earlier trademark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is protected,
and there exists a likelihood of confusion on the part of the public which includes likelihood of association with the earlier trademark.
A trademark may be refused on the basis that it may be subject to a common law passing off action. In this case there is no registrar as such. A common-sense approach needs to be taken to searches online in directories the internet et cetera.
Identical
In the case of an identical mark its use in respect of identical goods may not be registered. What constitutes identical goods or services is a matter of degree. It is not sufficient that they are within one of the 40 or so types of categories in the trademarks legislation. Something more is required. There has to be significant or considerable identity in that the goods are in terms of their function and use. The identity need not be direct.
In considering whether marks are identical the court views the position from the perspective of a reasonably well informed and circumspect consumer. It takes into account visual perception, primarily. Touch and hearing may also be relevant in some cases.
A proposed mark may be identical with part of an existing in part or in whole. The position is more problematical when the earlier mark is reproduced in part within a new mark. A mark be identical notwithstanding that it is presented differently in a different order or different manner.
Similarity
In assessing the similarity of marks, the courts take an overall impression of their visual and other similarities. They have particular regard to distinctive or predominant features. If the court discerns that the distinctive and dominant features of the earlier mark appear in the proposed mark and may lead to confusion for consumers such that they associate them with the earlier mark, the registration may be opposed.
The must be similarity in the goods and services for which registration is sought. The matter is considered primarily from the perspective of likely users. Regard is had to what hypothetically new goods or services might be expected to be offered with reference to the earlier mark. Regard may be had to the circumstances including the means of marketing
The existing established goodwill of the exist of the earlier registered mark, its reputation marketing and presentation are important. Once again, the key consideration is the likelihood of confusion in the mind of consumers and other users
Regard is had to
- the nature of the goods,
- the way in which goods are sold and marketed
- the extent to which they are or are likely to be used in competition and the
- respective likely users use of the goods
Registration may be refused in respect of the similar or other goods where it would take unfair advantage of or be detrimental to the reputation of an existing trademark.
Public Policy / Bad Faith
A trademark may not be registered if it is
- contrary to public policy or morality
- made in bad faith
- likely to deceive.
Registration of a word which would suggest a quality which is not present is likely to deceive and not be registrable.
A registration application may be in bad faith and disallowed where it seeks to take advantage of existing goodwill that does not properly belong to the claimant.
An application may be made to strike off a registration on the above grounds.
Registration may be refused in respect of words that are insulting contained vulgar language or explicit adult content.
Revocation
If mark is not use for five years after registration or reregistration. it may be struck off in respect of the relevant category.
A trademark has become generic and common mark for that type of goods and services may no longer things to goods or services may cease to be registrable and may be subject to revocation.
Trademark may be revoked of has become misleading because of the manner in which it is used permitted to be used.
