Trademarks Statutes

Question 1

What does S1(1) of the TMA 1994 say?

Answer 1

A TM must be 3 things:

1. Is a sign
2. Can be represented adequately on the register in a manner that conveys the clear and precise protected subject matter
3. Is capable of distinguishing the goods/services of one undertaking from those of other undertakings

A TM may be: words, designs, letters, numerals, colours, sounds, and shapes of goods and/or their packaging.

This act used to require that the TM was capable of being represented graphically, but that has since been removed by EU directives.

Question 2

What are the absolute grounds for refusal and where can they be found?

Answer 2

TMA 1994 S(3).

S(3)1a says things that don’t satisfy the requirements of S1.

• S(3)1b mentions marks devoid of distinctive character
• S(3)1c mentions marks that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographic origin, time of production/rendering, or other characteristics of goods/services.

S(3)2 recites the preliminary obstacles, “if the TM consists exclusively of”

S(3)3 mentions the application being contrary to public policy or morality, and those that are deceptive.

S(3)4 mentions if its use is prohibited by UK or EU law.

S(3)5 mentions bad faith.

Question 3

What is covered in the TMA Section 9?

Answer 3

Section 9 deals with the rights conferred by a registered TM.

9(1) is Cyclical: “The proprietor of a registered TM has exclusive rights in the TM and is infringed by any use of the TM in the UK without the proprietor’s consent”

9(1)(B) Subsection 1 is without prejudice to the rights of proprietors acquired before the DoF of the application for registration or the PD claimed with respect to the application.

9(3) The rights of the proprietor have effect from the DOF, which is the DOF of the application for registration. Provided that

• 9(3)(a) no infringement proceedings may begin before the registration date
• 9(3)(b) no offence is committed before the PubD of the registration.

Question 4

What is covered in the TMA 10?

Answer 4

TMA 10 covers infringing acts.

(1) [Double ID] A person infringes if they use an identical TM in the course of trade in relation to identical goods/services for which the TM is registered.
(2) [Interdependence] if someone infringes and because:
- 2(a) the sign is identical and the goods/services are similar
- 2(b) the sign is similar and the good/services are identical

there exists a likelihood of confusion on behalf of the public.

(3) someone infringes is the TM is identical OR similar to a TM, where the TM has reputation in the UK, and the use of the TM takes unfair advantage of, or is detrimental to the distinctive character/repute of the mark.

(4) A person uses a TM if:
(a) affixes it to goods/packaging
(b) offers to or prepares to expose goods for sale
(c) imports/exports/trades under TM
(d) uses in business papers or in advertising
(e) uses in comparative advertising in a manner hat is contrary to marketing regulations.

Question 5

What does the CTM say in section 9(1)(c)

Answer 5

[CTM marks with reputation and dissimilar goods/services]

Any sign identical or similar to a CTM in relation to goods/services that are not similar to those of the registered CTM’s, where the registered CTM enjoys reputation and use of the registered CTM takes unfair advantage of or would be detrimental to the repute or distinctive character of the reg CTM, can be prevented from having consent to use the TM in the course of trade.