Chapter 4 Forms of trade marks

Question 1

Trade mark law does not prevent someone from doing business under their own name (human rights issues might possibly be at issue if this were to be attempted). Give a famous example

Answer 1

McDonalds

Question 2

Under the Act as introduced, a trade mark can be accepted for
registration is if it can be recorded graphically. What is the rationale behind this piece of legislation?

Answer 2

The rationale for this approach is fairly simple.
A trade mark confers a form of monopoly concerning at least some aspects of its exploitation. If someone is to be accused of trade mark infringement, it is
only equitable that they should have had the opportunity (by consulting
the register of trade marks) to make an informed decision whether their
conduct might be likely to constitute infringement.

Question 3

Explain what is stated in s. 1 (1) TMA 1994 which is used to determine if a trade mark can be registered.

Answer 3

(1) In this Act “trade mark” means any sign which is capable—
(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
(b) of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.

Question 4

Describe the various forms of identifier that might be protected under trade mark law (6)

Answer 4

1. Form
2. Slogans
3. Colour
4. Sounds
5. Shapes
6. Smells

Question 5

Why is it difficult to register a smell?

Answer 5

Smell is subjective, therefore it is hard to fulfill the distinctive character requirement under s 1 (1) TMA 1994.

Question 6

Explain 4 key difference between UK and EU trademark law

Answer 6

1. Cost
2. Opportunity to withdraw
3. Opposition term
4. Opposition filing