Week 3

Question 1

What is the role of trademark agents and attorneys?

Answer 1

the services of a trademark agent familiar with the procedure for trademarks registration may be used to save time, ensure that you apply for protection in the appropriate class(es) and avoid refusal on absolute grounds.

Question 2

True or False?

Rights from a trademark registration can be exercised by its owner in the country of registration and, provided that it is well-known, also in other countries

Answer 2

True

Question 3

True or False?

Rights from a trademark registration can be exercised by its owner in the country of registration

Answer 3

False

Question 4

True or False?

Rights from a trademark registration can be exercised by its owner worldwide provided that the registration has been published

Answer 4

False

Question 5

True or False?

Rights from a trademark registration can be exercised by its owner in the country of registration provided that it is registered less than five years.

Answer 5

False

Question 6

True or False?

The absolute grounds for refusal are those which are based on the existence of a prior conflicting mark.

Answer 6

False

Question 7

True or False?

The absolute grounds for refusal are those which concern the intrinsic conditions of validity of a mark, provided for in the interest of consumer protection and those which are based on the existence of a prior conflicting mark.

Answer 7

False

Question 8

True or False?

The mere fact that the goods and services concerned are within the same class of the Nice Classification is not sufficient that the these goods must be considered as similar.

Answer 8

True

Question 9

True or False?

The ‘principle of specialty’ in trademarks means that the trademarks scope of protection is referred only to those goods or services that covers the trademark registration as well as the similar ones; exceptions might apply if the trademark is well-known.

Answer 9

True

Question 10

True or False?

Trademark applications can be rejected by a Trademark office based on:

Absolute grounds

Answer 10

False

Question 11

True or False?

Trademark applications can be rejected by a Trademark office based on:

Relative grounds

Answer 11

False

Question 12

True or False?

Trademark applications can be rejected by a Trademark office based on:

Absolute and relative grounds

Answer 12

False

Question 13

True or False?

Trademark applications can be rejected by a Trademark office based on:

None of the foregoing but only if they are immoral or contrary to the public order

Answer 13

False

Question 14

True or False?

Trademark applications can be rejected by a Trademark office based on:

It depends on local laws

Answer 14

True

Question 15

True or False?

ARIPO, OHIM and OAPI are:

Agencies of the United Nations engaged in the protection of intellectual property law

Answer 15

False

Question 16

True or False?

ARIPO, OHIM and OAPI are:

Agencies of the United Nations engaged in the protection of intellectual property law

Answer 16

False

Question 17

True or False?

ARIPO, OHIM and OAPI are:

Regional trademark offices where a trademark can be registered for protection in all
their member states

Answer 17

True

Question 18

True or False?

ARIPO, OHIM and OAPI are:

The Dutch, German and French acronyms for WIPO

Answer 18

False

Question 19

True or False?

ARIPO, OHIM and OAPI are:

International trademark treaties governing the minimum requirements of a trademark application.

Answer 19

False

Question 20

True or False?

The Madrid Agreement and Madrid Protocol:

Provide for an autonomous trademark registration system for filing trademark applications with WIPO with immediate effect in all member states

Answer 20

False

Question 21

True or False?

The Madrid Agreement and Madrid Protocol:

Are designed to streamline and harmonize administrative trademark procedures by defining a maximum of formal requirements that an Office of a member state may apply

Answer 21

False

Question 22

True or False?

The Madrid Agreement and Madrid Protocol:

Prohibit the registration and use of trademarks which are identical to, or present a certain similarity with, armorial bearings, flags, and other State emblems of their member states

Answer 22

False

Question 23

True or False?

The Madrid Agreement and Madrid Protocol:

Make it possible to protect a mark in a large number of countries by obtaining an international registration, based on a national or regional trademark, which has effect in each member state that has been designated.

Answer 23

True

Question 24

True or False?

The concept of “central attack” embodied in the Madrid system means that:

For the first five years following the effective date of the international registration, its validity and scope will depend upon the fate of the basic home application or registration

Answer 24

True

Question 25

True or False?

The concept of “central attack” embodied in the Madrid system means that:

The owner of a prior trademark has to file an invalidation action centrally with WIPO to cancel the international registration

Answer 25

False

Question 26

True or False?

The concept of “central attack” embodied in the Madrid system means that:

Trademark infringement proceedings based on an international registration can only be successful if they are brought before a court at the central headquarter of the infringer

Answer 26

False

Question 27

True or False?

The concept of “central attack” embodied in the Madrid system means that:

Trademark infringement proceedings have to be based on the international registration as well as the underlying basic home registration in order to succeed.

Answer 27

False

Question 28

True or False?

The international application under the Madrid system must contain, inter alia, a reproduction of the mark, a list of the goods or services for which protection is sought, classified in accordance with the current edition of the Nice International Classification of Goods and Services, and the designation of the countries in which the mark is to be protected

Answer 28

True

Question 29

True or False?

The international application under the Madrid system must contain only a reproduction of the mark, a list of the goods or services for which protection is sought, classified in accordance with the current edition of the Nice International Classification of Goods and Services, and the designation of the countries in which the mark is to be protected.

Answer 29

False

Question 30

True or False?

An application for international registration must be presented to the World Intellectual Property Organization through the Office of origin.

Answer 30

False

Question 31

True or False?

Upon receipt of an international application, World Intellectual Property Organization carries out an examination as to the form only.

Answer 31

False

Question 32

True or False?

The Madrid system of international registration of marks is administered by the International Bureau of the World Intellectual Property Organization.

Answer 32

True

Question 33

True or False?

The Madrid system of international registration of marks may be used only by a natural person or a legal entity which has a real and effective industrial or commercial establishment in the territory of a country which is party to the Madrid Agreement or the Madrid Protocol, or is domiciled in a country which is party to the Madrid Agreement or the Madrid Protocol, or is a national of a country which is party to the Madrid Agreement and the Madrid Protocol.

Answer 33

False

Question 34

True or False?

Protection can be obtained only in those countries which are party to the Madrid system of international registration of marks.

Answer 34

True

Question 35

True or False?

The Madrid system of international registration of marks can also be used to protect a mark outside the Madrid Union.

Answer 35

False

Question 36

Why do you need a trademark attorney for registration procedure of trademark rather than facilitating by yourself?

Answer 36

• To save time
• To ensure that you apply for protection in appropriate class(es)
• Some national laws require to appoint a trademark agent

Question 37

What are the procedures involved in a trademark registration?

Answer 37

1. Preliminary TM search
2. Application form duly filed with prescribed fees
3. Examination
4. Reasonable opportunity is given to the party for being heard before refusal or any set of discrepancies in application
5. Regusal/Grant and publication
6. Appeal on the ground of refusal

Question 38

What is the purpose of a preliminary TM search?

Answer 38

It is a method to make sure that the trademark you intend to use or a similar one is not already registered by another company, for identical or similar products.

Question 39

What is the principle of territoriality?

Answer 39

The legal rights arising out of trademark registration are normally limited to the territory to which they pertain, so ordinary a valid registration of a trademark in your home country gives you right only in your own country.

Question 40

Is it possible to register your TM internationally?

Answer 40

Yes, though the international registration of a trademark is allowed in countries which are signatory of the Madrid system.

Question 41

Why should one register at a regional office?

Answer 41

• So that international registration can be maintained and renewed through a single procedure.
• To avoid filling compliance, to seek protection in different-different countries by filing the corresponding application in the required language and paying the required fees. {principle of territoriality applies}

Question 42

What are the documentation requirements while filing a TM application?

Answer 42

You have to send (via post or fax ) or online or handed duly completed TM application form (directly to IPO) which includes:

1. Contact details of your company,
2. A representation of a mark
3. A description of the goods or services
4. Class/Classes for which your business wishes to obtain TM registration from NICE Classification
5. Pay the required fees.
6. Proof of use or a declaration that your company intends to use the trademark (followed in USA and Canada only)

Question 43

Whether any standardization over other nations exist in filling forms and requisite criteria?

Answer 43

Yes. Article 3 of TLT contains an exclusive list of information which of TM offices of contracting parties may require for TM registration and expressly prohibit certain formalities,

Question 44

How do you find/select an appropriate class of your TM application?

Answer 44

Using Madrid Goods and Services Manager Tool

Question 45

What are the kinds of examination followed in TM application examination?

Answer 45

1. Examination as to the form (Whether it is properly filled and paid prescribed fees or not)
2. Examination as to the substance.

Question 46

What are the two types of refusal with respect to the examination of TM application as to the substance?

Answer 46

1. Absolute grounds of refusal

2. Relative grounds of refusal

Question 47

How will you conceptualize the absolute grounds for refusal?

Answer 47

The absolute grounds for refusal are those which concern the intrinsic conditions of validity of a mark, provided for in the interest of consumer protection, that is, whether the mark is distinctive, not deceptive, and not immoral or against public order, and not in breach of Article 6 of the Paris Convention.

Question 48

How will you conceptualize the relative grounds for refusal?

Answer 48

The relative grounds for refusal are those which are based on the existence of a prior conflicting mark.

Question 49

Enlist a few countries which

1. Examine only for absolute grounds
2. Examine for both grounds

Answer 49

1. France, Germany, Switzerland or Poland

2. Japan, US, Australia, Columbia, Peru, Argentina

Question 50

Where can an appeal be filed if the applicant is not satisfied with the reason(s) of the refusal of TM application?

Answer 50

Depending on the legal system of the country, an appeal may be lodged with the office, with an administrative appeal board or with a court.

Question 51

Why is the publication of TM in official TM gazette important when the grant has been published?

Answer 51

It is important for owners of prior rights and the public that all relevant data contained in the register, concerning the application, registration renewals and changes of name, address and ownership should be published in an official gazette. This enables owners of prior rights to take necessary steps including the opposition, or action for cancelation.

Question 52

Why is the register of the TM mark generally accessible to the public after publication?

Answer 52

The register of the mark is generally accessible to the public, to ensure that owner of prior rights are properly informed. This database is further utilized in preliminary trademark search.

Question 53

Who may use the Madrid system?

Answer 53

The possibility of filling an international application under Madrid system is limited to the person who meets one of the following conditions:

1. Be a national of a country party to the Madrid Agreement or Protocol, or
2. Have a domicile in a country party to the Madrid Agreement or Protocol, or
3. Have real and effective industrial or commercial establishment in the territory of the country party to the Madrid Agreement or Protocol.
4. There is a need for a prior application or prior registration of the mark in the office of origin.

Question 54

What are the contents of an International application?

Answer 54

The international application must contain inter alia

1. Reproduction of the mark which must be identical with that in the home registration or home application;
2. A list of goods or services which protection is sought classified in accordance with the current edition (Based on NICE)
3. Designation of the countries in which a mark is to be protected.

Question 55

What is the procedure of an international TM application?

Answer 55

1. An International applicationis filed with the office of origin, national or regional office.
2. The office of origin presents an international application to WIPO.
3. WIPO checks whether basic filing requirements have been met according to the Madrid system and TLT.
4. The application is accepted by WIPO which ten notifies the international registration to trademark offices of the countries for which protection has been requested.
5. Those national trademark offices then conduct their own substantive examination as provided by their own national legislation.
6. They may grant the TM certificate or refuse the application on any ground but not on the ground of its non-compliance with formality requirements because they are already checked by WIPO.

Question 56

What is the time period for notifying when a national office rejects an international application forwarded by WIPO?

Answer 56

To notify refusal to WIPO within 12 months with an option to extend to 18 months

Question 57

What is the scope of protection of an international registration?

Answer 57

The scope of protection of an international registration in each of the designated states is not governed by international provisions contained in the Madrid system, but exclusively by the national law of each of the designated states and where applicable, the regional treaty concerned.

Question 58

What is the duration of an international trademark?

Answer 58

10 years.

Question 59

Is trademark registration costless? If not, what are the fees?

Answer 59

Trademark registration is not costless. Following fees have to be paid -

1. Filing Fee
2. Fee for each class of goods/services
3. Registrartion Ability

Question 60

Name a few regional trademark offices.

Answer 60

1. African Regional IP office (ARIPO)
2. Benelux TM office
3. EUIPO office
4. Organisation Africaine de la propriété Intellectuelle (OAPI)

Question 61

Define the principle of specialty.

Answer 61

The principal of specialty means in particular that if a person obtains the protection of the mark XX in relation, for example to shoes, nothing prevents the third party to use the very same name XX for other types of goods and/or services for which there cannot be a likelihood of confusion, for example, computers.

Question 62

Is trademark registered for an indefinite period of time?

Answer 62

No, depending upon the national/regional/international law, a trademark is registered for a reasonable amount of time. After the expiry of this period, a TM holder may apply for re-registration.