Unit 4.2 - The registration, use and transfer of trade marks Flashcards
What is a trademark ?
A trademark is a symbol, word, or other sign that a person uses or plans to use to distinguish their goods or services from those of others in the market.
What are the essential elements of a trademark ?
- Mark that is used or proposed to be used.
- In relation to goods or services.
- For the purpose of distinguishing them from the same kind of goods and services which are connected in the course of trade with another.
What is the function of a trademark ?
A trademark helps consumers identify where a product or service comes from, making it easy to tell it apart from others.
Canon case.
What is the general position for a trade mark to be registered ?
- Be distinctive.
- Must not contravene the negative criteria.
What is the essential elements of registerable trade marks ?
- Capable of distinguishing the goods or services of one trade from those of another.
- Must be capable of distinguishing inherently or through prior use.
- Must be capable of so distinguishing either generally or through use within limitations.
Section 9 of the Trade Marks Act.
Discuss the disqualification of trademarks.
- Once a mark has passed the section 9 test of being ‘capable of distinguishing’ it must also not fall under any of the grounds in section 10.
- In terms of section 10(1), if any of the requirments for are not met then registration will be refused.
Section 10 of the Trade Marks Act.
When is a mark inherently non-distinctive ?
A mark that:
- Cannot distinguish the goods or services (as explained in section 9).
- Is only a sign that describes things like the type, quality, quantity, purpose, value, origin, or other features of the goods or services, or how/when they are made or provided.
Section 10(2) of the Trade Marks Act.
Discuss proprietorship and good faith.
- A trade mark must be filed in good faith by its true proprietor and with the intention of using it as a trade mark.
- Sections 10(3), 10(4) and 10(7) of the Trade Marks Act prohibit the registration of trade marks which do not meet these requirements.
Discuss section 10(3) of the Trade Marks Act.
Provides that a trade mark application must be filed by the true proprietor, the person who adopted the mark in good faith with the intention of using it as a trade mark.
Discuss section 10(4) of the Trade Marks Act.
Provides that a trade mark applicant must have a bona fide intention to use the mark as a trade mark.
Discuss section 10(7) of the Trade Marks Act.
Provides that an application to register a trademark cannot be made in bad faith.
What are the four requirements for registration of trademarks ?
- Comply with the requirements of a mark.
- Comply with the definition of a trade mark in section 2.
- Be distinctive within the meaning of section 9.
- Not be disqualified in terms of section 10.
On which three aspects is the application for registration of a trademarks centralized around ?
- There must be a sign (i.e. a mark).
- It must be capable of graphical representation.
- It must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Discuss the four step approach.
- Identify the Mark (a mark can be any sign that can be represented graphically).
- Does the Mark Qualify as a Trade Mark ?
- Positive Criteria (the mark must be capable of distinguishing the goods or services of one person from those of another).
- Negative Criteria (a mark cannot be registered if it cannot distinguish the goods/services as required by Section 9).
What are the need for classes ?
- Classes provide for better facilitation in the registration process as well as infringement searches.
- It is thus necessary to classify these goods and services.
