Unit 4.3 - Grounds for refusal and opposition for trademark registration

Question 1

What are the two sides of section 10 ?

Answer 1

• Refusal refers to the Registrar’s authority to reject a trademark application based on the grounds listed in Section 10.
• Opposition allows any interested third party to challenge a trademark application they believe should not be registered.

Question 2

What are the grounds for refusal/opposition/removal ?

Answer 2

• Lack of Intrinsic Registrability.
• Bona Fide Issues.
• Protection of Third-Party Rights.
• Deception and Confusion.
• Dilution of Well-Known Marks.

Section 10.

Question 3

Discuss the lack of intrinsic registerability.

Answer 3

• This encompasses marks that fail to meet the basic requirements of a trademark.
• For example, a mark that cannot be represented graphically, is not distinctive, or is simply a shape, configuration.

Question 4

Discuss the bona fide issues.

Answer 4

A trademark application can be rejected if the applicant does not have a genuine claim to ownership.

Question 5

Discuss the protection of third-party rights.

Answer 5

Section 10 safeguards existing trademark rights by prohibiting the registration of marks that conflict with prior registrations, prior applications, or well-known trademarks, particularly those protected under the Paris Convention.

Question 6

Discuss deception and confusion.

Answer 6

• The Act seeks to prevent consumer deception.
• Therefore, marks deemed inherently deceptive or those likely to cause confusion due to similarity with existing trademarks would be rejected.

Question 7

What are misdescriptive marks ?

Answer 7

Prohibits the registration of trademarks that are “misdescriptive,” meaning they create an impression that the product possesses characteristics that it actually lacks.

Section 10(13).

Question 8

What is the difference between deception and confusion ?

Answer 8

Deception involves intentionally creating a false belief, while confusion refers to uncertainty or bewilderment that might not necessarily be intentional.

Question 9

Discuss the dilution of well-known marks.

Answer 9

Section 10(17) specifically addresses the dilution of well-known trademarks, preventing the registration of marks that, even without causing confusion, would take unfair advantage of or harm the distinctive character or reputation of an established trademark.

Question 10

What is the four-step approach to analyzing trademark registration ?

Answer 10

1. Identify the Mark: Analyze whether the mark meets the definition outlined in Section 2(1), ensuring it’s capable of graphical representation.
2. Qualifying as a Trademark: Determine if the mark is used or intended for use in trade to distinguish goods or services. Refer to the definition in Section 2(1).
3. Positive Criteria: Assess if the mark is inherently distinctive or has acquired distinctiveness through prior use, making it capable of distinguishing goods or services.
4. Negative Criteria: Review the subsections of Section 10 meticulously to ensure the mark does not fall under any of the grounds for refusal.