Module 4

Question 1

What are the kinds of requirements w.r.t. the criteria of registerability for a sign to be registered as TM?

Answer 1

1. Distinguish the goods or services of one enterprise from the goods or services of other enterprises.
2. Possible harmful effects of a trademark if it has a misleading character or if it violates public order or morality.
3. Existence of earlier rights of third parties, which may prevent the registration on the trademark, where opposition proceedings are provided for the applicable law or justify the cancellation of trademarks already granted.

Question 2

On what parameters, does an authority need to judge for representation of a Trademark?

Answer 2

7 specific criterion given by Sieckmann are applicable 1. Clear,

2. Precise,
3. Self-contained,
4. Easily accessible,
5. Intelligible Differentia,
6. Durable and
7. Objective

Question 3

What are the grounds for refusal of registration of trademark or invalidity of trademark registration as per Article 4 of the new directive?

Answer 3

The following shall not be registered or, if registered, shall be liable to be declared invalid.

(a) signs which cannot constitute a TM;
(b) TMs which are devoid of any distinctive character;
(c) TMs which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;
(d) TMs 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

Question 4

How do you determine whether or not a mark has acquired distinctive character in the market?

Answer 4

1. The market share held by the mark,
2. How intensive geographically widespread and long-standing has been,
3. The amount invested by the undertaking in promoting the mark,
4. The proportion of the relevant class of the person who because of the mark identify the good as originated from a particular undertaking and statements from chambers of commerce or industry or other trade and professional associations.

Question 5

What is tarnishment of TM?

Answer 5

The distinctiveness of a sign is not an absolute and unchangeable factor, depending on the steps taken by the user of the signs or third parties. It can be acquired or increased or even lost. This is called tarnishment of TM.

Question 6

How do you determine whether marks will fall under the category of Descriptive marks?

Answer 6

1. Whether the average consumers are likely to regard a sign as the reference to the origin of the product or
2. Whether they will rather look on it as a reference to the characteristic of the goods or they geographical origin.

Question 7

What is the criteria for suggesting that a sign is Deceptive in nature?

Answer 7

1. A sign which is not inherently deceptive becomes deceptive as a consequence of its use on the market by the owner.
2. Signs that are descriptive or indicative of geographical origin are false for products that do not come from the region described or indicated in such cases the consumer will be deceived if there is a reference to the geographical origin that has the wrong connotation for him.
3. Indeed, even their use of foreign words can under certain circumstances be deceptive without any reference to a specific geographical origin.

Question 8

Discuss a famous example of a deceptive sign.

Answer 8

A famous Swiss mountain for chocolate would still deceive consumers as could as the device a mark consisting of untypical Alpine landscape.

Question 9

What is the general rule when a trademark sign and public policy/morality are at juxtaposition?

Answer 9

TM laws generally deny registration to signs that are contrary to public policy or accepted principles of morality. The TM cannot be registered If it’s contrary to accepted principles human dignity, freedom, equality and solidarity as well as the principles of democracy and the rule of law.

Question 10

What are the cases when a previously granted trademark ceases to operate?

Answer 10

1) Surrender by owner
- Partial Surrender of Goods and Services
- Fully surrender of Goods and Services
2) Declaration of invalidity and
- Absolute Refusal & - Relative Refusal
3) Declaration of revocation.
- A revocation for non-use,
- Revocation for becoming generic and
- Revocation for becoming deceptive.or contrary to law, public policy and morality.

Question 11

What are various symbols related to trademark registration?

Answer 11

1. For Registered Trademark: R having outside circled in superscript after the marks/sign/words
2. For unregistered Trademark, when the trademark application is under-process of scrutiny: TM in superscript after the marks/sign/words
3. For unregistered Servicemark, the Servicemark application is under-process of scrutiny: SM in superscript after the marks/sign/words

Question 12

What are the cases when trademarks enjoying protection under Article 6(a) of Paris Convention may be denied registration or invalidated?

Answer 12

1. When they are of such nature as to infringe rights acquired by third parties in the country where protection is claimed;
2. When they are devoid of any distinctive character;
3. When they are contrary to morality or public order and, in particular, of such a nature as to deceive the public

Question 13

What are the essentials for a sign to be registered as a trademark?

Answer 13

The sign does not consist exclusively of the shape or another characteristic which results from the nature of the goods themselves or the shape or another characteristic of goods which is necessary to obtain a technical result and third shape or another characteristic which gives substantial value to the goods.

Question 14

According to EU Directive 2015/2436 on the Laws relating to trademarks, what are the signs that a trade mark may consist?

Answer 14

According to Article 3, a trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

Question 15

In which case, the Court of Justice of the EU recognized the requirement of Sieckmann criterion?

Answer 15

Ralf Sieckmann v Deutsches Patent und Markenamt

Question 16

What is the objective behind the graphic representation of a sign to be registered as trademark?

Answer 16

The object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective.

Question 17

What do you understand by the requirement of distinctiveness?

Answer 17

The test whether the trademark is distinctive is bound to depend on the understanding of the average consumer of goods or services covered by application or at least the persons to whom the sign is addressed. The average consumer is deemed reasonably, well informed and reasonably observant and circumspect. The distinctiveness of a sign is not an absolute factor.

Question 18

What are the two classes of distinctive marks?

Answer 18

The law recognizes two classes of distinctive marks:

1. Inherently distinctive that is arbitrary, fanciful, suggestive marks.
2. Marks that have acquired distinctiveness.

Question 19

What is the advantage of using coined/fancy words in trademark registration?

Answer 19

Coined words have the advantage of being easy to protect as they are more likely to be considered inherently distinctive. Unlike suggestive marks, the risk of conflict with other existing marks is small. KODAK is a popular example.

Question 20

What is the purpose of prohibition of registration of purely descriptive signs or indication?

Answer 20

To prevent registration as trademarks of signs or indications which because they are no different form they usually way of designating the relevant goods or services or the characteristic could not fulfill the function of identifying the undertaking that markets them and are does devoid of the distinctive character that need it for that function.

Question 21

Define descriptive signs.

Answer 21

Descriptive signs are those that serves in trade to designate the kind, quality, intended purpose, value, place of origin, time of production, or any other characteristic of the goods for which the sign intended to be use or is being used

Question 22

What is the drawback of unused trademarks?

Answer 22

Unused trademarks are an artificial barrier to the registration of new marks. There is an absolute need to provide for a use obligation in trademark law.

Question 23

What is the principle consequence of unjustified non-use of a trademark?

Answer 23

The grace period granted in the trademark laws that provide for a use obligation is sometimes three years but more often five years in many countries. The principle consequence of unjustified non-use is that the registration is open to cancellation at the request of a person with a legitimate interest

Question 24

In a proceeding related to unused trademark, on which party does the burden of proof lie?

Answer 24

The burden of proof should be on the trademark owner not only in cancellation proceedings but also in any other proceedings where the owner is alleged to have taken advantage of his unused trademark right.