Unit 4.3 – Grounds for Refusal and Opposition

Question 1

3 Aspects of
Trade Mark
Application

Answer 1

➢ 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.

Question 2

Four Requirements for Registration of a Trade Mark

Answer 2

➢ 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.

Question 3

What are the consitions under which a trade mark application is ought only to proceed to registration?

Answer 3

➢ The trade mark is distinctive and able to function as a trade mark (it must be registrable); and
➢ No 3rd party rights in a similar trade mark would be impinged
by the use and registration of the trade mark.

Question 4

Steps to Trade Mark Infringement – Section 34(1)(a) – (b)

Answer 4

➢ Comply with the requirements of a ‘mark.’
▪ Identify the mark.
▪ Ask yourself the question: Is there a sign or symbol
capable of graphical representation?
▪ Turn to the definition of section 2(1) of the Act.
➢ Comply with the definition of a ‘trade mark’ in Section 2.
▪ Ask yourself the question: Is the ‘mark’ used or intended
to be used in the course of trade?
▪ Turn to the definition of section 2(1) of the Act.
➢ Be distinctive within the meaning of section 9 (+ criteria)
▪ Ask yourself the question: Can the trade mark distinguish itself from the goods or services of another.
▪ Turn to section 9 of the Act.
➢ Not be disqualified in terms of section 10.
▪ Ask yourself the question: Will the trade mark be disqualified?
▪ Turn to section 10 of the Act.

Question 5

Disqualification from Registration:

Answer 5

1. Refusal of an Application for Registration:
This happens when a trademark application is initially reviewed and rejected, usually because it doesn’t meet the requirements for registration.

2. Opposition to Registration:
After a trademark application is accepted for publication, third parties can oppose its registration, arguing that the trademark shouldn’t be registered for various reasons.

3. Removal or Cancellation of a Trademark:
This occurs when a registered trademark is challenged and removed from the register. It can happen for reasons like non-use or if it was registered fraudulently.

4. Infringement:
This is when a registered trademark is used without permission by someone else, leading to legal disputes. Infringement can occur at any time after the trademark is registered.

Question 6

The Two Sides of Section 10

Answer 6

➢ Refusal
▪ Person must have the authority to refuse it (the Registrar).
▪ As a 3rd party you cannot refuse.
➢ Opposition
▪ Any interested 3rd party from the public

Question 7

Section 10
➢ The Preamble
▪ The following marks shall not be registered as trade marks or, if registered, shall subject to the provisions of
sections 3 and 10, be liable to be removed from the register.

Answer 7

➢ Section 10(1) – Lack of Intrinsic Registrability
▪ A mark which is not a trade mark.
➢ Section 10(2)
▪ Deals with 3 situations of a mark
* (a) Non-compliance with section 9
* (b) Descriptive marks
* (c) Ordinary Language (generic marks)
➢ Section 10(3)
▪ No bona fide claim to proprietorship.
➢ Section 10(4)
▪ No bona fide intention to use
➢ Section 10(6)
▪ Well-known trade marks
➢ Section 10(7)
▪ Mala fide application
➢ Section 10(12)
▪ Inherent deception or use likely to deceive
➢ Section 10(13)
▪ Marks which have been used deceptively
➢ Section 10(14)
▪ Conflict with prior trade mark registration
➢ Section 10(15)
▪ Conflict with prior application
➢ Section 10(16)
▪ Contrary to existing rights
➢ Section 10(17)
▪ Dilution

Question 8

Grounds for Registration Refusal and Opposition

Answer 8

❖Lack of intrinsic registrability
❖ Prohibited Marks (sections 10(8) & (9) & (10))
❖ Proprietorship and not in Good Faith
❖ Subject of third-party rights

Question 9

Lack of intrinsic registrability

Answer 9

➢ It does not constitute a mark – s 10(1)
➢ Not capable of distinguishing itself – s 10(2) and s 9
➢ It constitutes a shape, configuration, pattern or color which
is necessary to obtain a specific technical result from the
nature of the goods themselves – s 10(5).
➢Color/configuration/pattern/shape likely to restrict the
development of art of industry – s 10(11).
➢ ‘Misdescriptive’ use is likely to confuse or deceive
consumers – s 10(13).

Question 10

Prohibited Marks (sections 10(8) & (9) & (10))

Answer 10

➢ National flags and symbols.
➢ Indicating State patronage.
➢ Specifically prohibited in the Trade Mark Regulations.

Question 11

Proprietorship and not in Good Faith

Answer 11

➢ Not filed by the proprietor – s 10(3)
➢ No bona fide intention to use – s 10(4)
➢ Bad faith – s 10(7)

Question 12

Subject of third-party rights

Answer 12

➢ Paris Convention well-known marks – s 10(6)
➢ Inherently deceptive/contrary to law/ likely to give offence. –
s 10(12)
➢ Confusingly similar to previous trade mark application.
➢ Contrary to existing rights of a 3rd Party.
➢ Confusingly similar to a well-known mark if it will cause
economic harm

Question 13

Expansion on 3rd Party Rights

Answer 13

❖ Section 10(6) – Well Known Foreign Trade Mark
❖ Section 10(12) – Protecting Public from Deception
❖ Section 10(14)
❖ Section 10(15)

Question 14

Section 10(6) – Well Known Foreign Trade Mark

Answer 14

➢ A trade mark application will be refused if:
▪ On the date of application, it or the essential part of it,
constitutes a reproduction, imitation or translation;…
▪ Of a trade mark which is entitled to protection under
the Paris Convention as a well-known trade mark; and
▪ It is to be used, or intended to be used, for goods or
services identical or similar to the goods or services in
respect of which the trade mark is well known; and
▪ Such use is likely to cause deception or confusion

Question 15

Article 6bis of the Paris Convention

Answer 15

▪ Requires member states to prohibit the registration and
use of a foreign trade mark or a derivative of it in certain
circumstances.
▪ These circumstances are where:
* A mark constituting a reproduction, imitation or a
translation of a foreign trade mark;
* Is sough to be used and/or registered locally; but
* Is liable to cause confusion by virtue of the fact that
the foreign mark is well-known locally to be a mark;
and
* Which is used for identical or similar goods belonging
to a subject of a convention country.

Question 16

A Key Factor of Section 10(6) NB!

Answer 16

The factors required must be shown to have been
present at the time when the application was filed.

Question 17

What kind of deception does Section 10(12) cater for?

Answer 17

▪ Confusion which could be dangerous to the public.
▪ Trade marks could be deceptive as to the geographical
origin of the goods

Question 18

The steps in the court’s assessment of ‘inherently deceptive’
includes (NB):

Answer 18

Comparing Use:
* The court compares how the trade mark applicant plans to use the mark (notional use) with how the opponent is actually using their trade mark to see if there could be confusion among consumers.

Consumer Confusion:
* A significant number of consumers from the target market must be likely to get confused for it to matter.

Trading Style or Business Name:
* The opponent doesn’t have to prove they used their mark strictly as a trade mark. They can rely on the use of a trading style or business name if it might confuse people.

Unclean Hands:
* Even if the opponent has acted improperly or misled the public, it doesn’t defend the trade mark applicant. The Registrar’s main duty is to protect the public from confusion.

Question 19

Being successful on grounds of Section 10(14)

Answer 19

Must show:
▪ The opponent is the owner of the registered trade mark; and
▪ That the mark in question is identical or so similar to the
trade mark applied for;
▪ That use of the trade mark applied for in relation to the
goods and services in respect of which it is applied to be
registered, is likely to deceive or confuse consumers.

Question 20

A possible defense ito s10(4)

Answer 20

▪ Honest concurrent use which can be raised under
section 14.
▪ The requirements are that the application must be in
good faith concurrently with the registered trade mark
for some time.

Question 21

Section 10(15)

Answer 21

➢ To be successful on this ground the following must be
shown:
▪ The opponent is the applicant of a prior trade mark
application.
▪ The subject mark of which is identical or so similar to the
application being opposed.
▪ Use of the trade mark opposed in relation to the goods or
services in respect of which it has been applied to be
registered, would be likely to deceive or cause confusion
of consumers.

Question 22

❖ Time Lines (3 Steps)

Answer 22

1. Refusal of an Application for Registration Steps:
   * Search: Initial search to check for any conflicts.
   * Official Action: Examination by the trademark office.
   * Acceptance: If no issues are found, the application is accepted.
   * Advertisement: The application is published for opposition.
   * Registration: If no oppositions are filed, the trademark is registered.
2. Opposition to an Application for Registration Steps:
   * Search: Initial search to check for any conflicts.
   * Official Action: Examination by the trademark office.
   * Acceptance: If no issues are found, the application is accepted.
   * Advertisement: The application is published for opposition.
   * Registration: If no oppositions are filed, the trademark is registered.

3. Rectification, Removal or Cancellation of a Registered Trademark Steps:
* Registration: The trademark is initially registered.
* Registered Trademark: The status of the trademark is maintained unless challenged for rectification, removal, or cancellation.

4. Section 34 Infringement
   Steps:
   * Registered Trademark: The trademark must be registered.
   * Use: The trademark is being used in a way that constitutes infringement.

Question 23

Section 24 – Grounds for Rectification

Answer 23

➢ An entry wrongly made or wrongly remaining in the register.
➢ It refers to a trade mark which should not have been
registered in the first place or one that has lost its distinctive
character after registration.

Question 24

Section 26

Answer 24

➢ Failure to comply with registration condition.
➢ This refers to where a condition was imposed when a trade
mark was registered, and such condition is not complied
with.

Question 25

Section 27 – Non Use

Answer 25

➢ Where a mark was registered with no bona fide intention to
use it where there has been no bona fide use of a mark, or
where a mark has not been used for five years

Question 26

Section 14

Answer 26

➢ Honest Concurrent Use.
➢ Where a trader in good faith made use of a trade mark
concurrently with another registered mark belonging to
someone else.

Question 27

Deception and Confusion Test (NB)

Answer 27

➢ The concept of deception and confusion between trade
marks is at the heart of trade mark law.
▪ Deception: Means to cause someone to believe to
believe something that is false.
▪ Confusion: Means to cause bewilderment, doubt or
uncertainty.
➢ It is a fundamental issue of equivalent importance to that of
the capability of a trademark to distinguish goods/services
as to origin.

Question 28

Registration vs Use

Answer 28

➢ Registration
▪ Registrability
▪ Registration
▪ Section 10
➢ Use
▪ Infringement/use (Section 34)

Question 29

Application for Registration

Answer 29

The Registrar examines the application, and it may also face opposition from third parties.

Question 30

Analysis by registar

Answer 30

The Registrar analyzes whether the application conflicts with existing trademarks or common law rights. This involves looking at several sections:
Section 10(12):
Section 10(14):
Section 10(15):
Section 10(16):

Question 31

Section 10(12)

Answer 31

Common Law Rights: If someone has rights under common law, it can be a ground for refusing registration.

Question 32

Section 10(14)

Answer 32

Prior Registration: If there is a previously registered trademark, it can be a ground for refusal.

Question 33

Section 10(15)

Answer 33

Application: If there is an existing application for a similar trademark, it can lead to refusal.

Question 34

Section 10(16)

Answer 34

Contrary to Prior Rights: If the application goes against any prior rights, it can be refused.

Question 35

Applications for Removal/Cancellation

Answer 35

Applicant’s Responsibility:
The person applying for the removal must demonstrate that there is a likelihood of confusion or deception due to the registered trademark.

Question 36

Conditions for Removal

Answer 36

A registered trademark can only be removed due to a likelihood of confusion or deception if this likelihood is caused by some blameworthy conduct (e.g., dishonest or negligent behavior) by the owner of the registered trademark.

Question 37

Regulation 19

Answer 37

1. Advertisement in Patent Journal:
   The process begins with the advertisement of a trademark application in the Patent Journal.
2. Opposition Period:
   A third party has a period of 3 months from the date of the relevant edition of the Patent Journal to file an opposition to the application.
3. Extension Request:
   In practice, the opposing party can request an extension of this opposition period.

Question 38

procedure for opposing a trademark application

Answer 38

Notice of Opposition (Form TM3) and Founding Affidavit:
* Filed by: Opponent.
* Timeframe: 1 month for the Applicant to give notice to defend.

Notice of Intention to Defend (Form 4):
* Filed by: Trademark Applicant.
* Timeframe: 2 months for the Applicant to reply.
* Consequence: If not filed on time, the matter can be set for a hearing on the unopposed roll.

Answering Affidavit:
* Filed by: Trademark Applicant.
* Timeframe: 1 month for the Opponent to reply.
* Consequence: If not filed on time, the matter can be set for a hearing on the unopposed roll.

Replying Affidavit:
* Filed by: Opponent.

Set Down:
* The matter is set for a hearing before the Registrar of Trade Marks.
* Costs: The Registrar has the authority to award costs in the proceedings.
* Appeal: A party to opposed proceedings may appeal to the High Court against any decision or order given in these proceedings.