Trademark Flashcards
What is a trademark?
word/symbol/phrase/design that [is capable of being represented graphically,] identifies & distinguishes source of goods
What is a service mark?
distinguishes source of service (like hotel, iCloud)
Is trademark registration compulsory? When can you register?
Optional but wise. Can still use “passing off” - protects unregistered rights of a particular business
Can register before or after first use.
Does trademarks have a term? (3)
1) 10 year term
2) indefinite renewals
3) can be deemed abandoned after 5 years of non-use
Describe the process of trademark registration. (5)
1) apply
2) trademark office examines mark & search for conflicting (confusingly similar) marks
3) your claim published for opposition by others
4) trademark office decides
5) either party can appeal to court
For “passing off”, what does the plaintiff need to prove? (3)
1) they have goodwill attached to the mark for the good/service
2) defendant engaged in misrepresentation, to take advantage of your goodwill
3) damage to your goodwill (probable or real)
Can someone using your trademark in a different class infringe you? Why?
No. Trademark only protects good/services in the class you register.
Reason: so you can’t lock up a mark in the class you register
Are trademarks international?
No. Trademarks are territorial.
For international recognition of trade mark, use the Madrid system. Register in one member jurisdiction, and can extend protection to member jurisdictions
Can same marks in different territories co-exist?
Yes, unless they are international brands.
What are 2 qualities a product/packaging must have, in order for trademarks to protect its visual appearance?
1) Distinctive: consumer identifies it as the source’s
2) Nonfunctional: merely decorative (can be just a little functional)
Both must be fulfilled
What are the 5 types of trademarks?
1) generic mark
2) descriptive mark
3) suggestive mark
4) arbitrary mark
5) fanciful mark
What is a generic mark?
Name of the good/service offered. No distinctive character. Cannot be claimed or registered.
e.g. vegetarian food court stall called “vegetarian”
What is a descriptive mark? How does it get verified.
describes quality, feature, function or characteristic of goods/services. Skeptical but may acquire distinctiveness through use in the market. Authorities may hear evidence (consumers recognise it? efforts to market it?)
e.g. praise words (laudatory) like ‘best’, place names, common names for persons
What is a suggestive mark?
meaningful but not literally descriptive
e.g. 7-11 means open from 7am-11pm
What is an arbitrary mark?
Word has meaning in another context. but mark is arbitrary for the product/service.
e.g. Apple, Shell, Penguin books
What is a fanciful mark?
A new term invented for use as a trademark, without any prior meaning. Inherently distinctive
e.g. Xerox, Rolex, Polaroid
What are the 3 requirements for the trademark infringement test?
1) similar marks: visual similarity, aural similarity, conceptual (meaning of words)
2) similar goods/services (same industry, potentially competing)
3) is confusion likely for the average consumer?
What are 2 remedies for trademark infringement?
1) injunction (warning/order) and/or damages
2) registration of conflicting mark not allowed
What is trademark dilution?
Weakens the distinctive quality of famous mark & causes confusion in the public. Competition not required.
What are 2 types of trademark dilution?
1) blurring: taking advantage of another [famous] mark, through using it in a different industry. (e.g. toothpaste named google)
2) tarnishment: when unauthorised use of a famous mark is offensive/unflattering. Confusion, but competition not required
What are 4 fair use defenses to trademark dilution?
1) comparative advertising (mentioning another brand n advertising/parodies)
2) non-commercial purposes (mentioning, using photos etc)
3) news reporting/commentary
4) parody cases (mostly in US, no cases in SG
