Week 4

Question 1

True or False?

A term must be inherently distinctive to become a trademark.

Answer 1

False

Question 2

True or False?

Distinctiveness is an attribute that can be acquired with time and effort.

Answer 2

True

Question 3

True or False?

It is convenient for a trademark owner to allow the public to use his trademark as a synonym of the products it identifies, because then his trademark will be very well-known and very successful.

Answer 3

False

Question 4

True or False?

The requirements which a sign must fulfill in order to serve as a trade mark are reasonably standard throughout the world.

Answer 4

True

Question 5

True or False?

Every sign capable of distinguishing goods or services of one enterprise from the goods or services of other enterprises can be registered.

Answer 5

False

Question 6

True or False?

The distinctive character of a mark including that acquired by use, must be assessed in concreto (i.e. in relation to the goods or services to which the trade mark is applied).

Answer 6

True

Question 7

True or False?

The demand for a trademark to have a distinctive character is focused on how the trade mark would be perceived by the average consumer of the goods or services covered by the application, or at least by the persons to whom the sign is addressed.

Answer 7

True

Question 8

True or False?

The average consumer is regarded as someone who is reasonable well informed and reasonably observant and circumspect.

Answer 8

True

Question 9

True or False?

In some jurisdictions a sign which is inherently devoid of distinctive character can be registered if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character.

Answer 9

True

Question 10

True or False?

To establish a secondary meaning of the mark the competent authority must taken into account, inter alia, the amount invested by the undertaking in promoting the mark.

Answer 10

True

Question 11

True or False?

Coined trademarks are invented words without any intrinsic or real meaning.

Answer 11

True

Question 12

True or False?

Common words and phrases from everyday language can not be distinctive.

Answer 12

False

Question 13

True or False?

Coined words are more likely to be considered inherently distinctive.

Answer 13

True

Question 14

True or False?

If the sign is, as a whole, exclusively descriptive cannot be registered as such as a trade mark.

Answer 14

True

Question 15

True or False?

Generic terms cannot function as a trademark.

Answer 15

True

Question 16

True or False?

Sign which may designate a characteristic of the goods or the services in respect of which its registration is sought is deemed capable of fulfilling the indication-of-origin function of the trade mark.

Answer 16

False

Question 17

True or False?

The word “vegetable” cannot be registered as a trademark for grocery services, since it is descriptive of items which a grocery sells. The sign is not sufficiently arbitrary for the goods and services covered and lacks therefore distinctiveness.

Answer 17

True

Question 18

True or False?

Simple letters or numerals are not considered distinctive as trademarks and they cannot become distinctive through use.

Answer 18

False

Question 19

True or False?

The word “Fresh” for eggs conveys a direct reference to the time of production and quality of eggs, which, in addition, appears to be particularly crucial in relation to such products. This word is therefore not apt to be distinctive.

Answer 19

True

Question 20

True or False?

The phrase “On Time” for airline services serves to indicate the intended purpose of the services, namely to provide airline transportation that arrives “on time.” Thus, this mark would not be considered distinctive of the services. Further, this phrase is needed by all airline companies to refer to their flights being “on time,” so it should not be limited to use by one company only.

Answer 20

True

Question 21

True or False?

Trademarks that are likely to deceive the public, for example, as to the nature or quality of the goods are not, in the interest of the public, eligible for protection. The test here is for intrinsic deception inherent in the trade mark itself when associated with the goods or services for which it is proposed.

Answer 21

True

Question 22

True or False?

Trademarks that are likely to deceive the public, for example, as to the nature or quality of the goods are not, in the interest of the public, eligible for protection. The test here is for the risk of confusing customers by the use of identical or similar trademarks for identical or similar goods or services.

Answer 22

False

Question 23

True or False?

Trademarks that are likely to deceive the public, for example, as to the nature or quality of the goods are not, in the interest of the public, eligible for protection. The test here is for acquired deceptiveness, which leads to cancellation of an already granted trade mark.

Answer 23

False

Question 24

True or False?

“Milky” for bread is misleading in relation to the goods on which the trademark is put.

Answer 24

True

Question 25

True or False?

Trade mark laws generally deny registration to signs that are contrary to public policy or accepted principles of morality.

Answer 25

True

Question 26

True or False?

The question as to whether a trademark violates public order or morality depends on the cultural heritage and conceptions of each country, and can only be decided on a case by case basis.

Answer 26

True

Question 27

True or False?

In the context of relevant provision of Regulation 2017/1001 on the European Union TM the concept of «public policy» refers to the body of Union law applicable in a certain area, as well as to the legal order and the state of law as defined by the Treaties and secondary EU legislation, which reflect a common understanding of certain fundamental rules and values.

Answer 27

True

Question 28

True or False?

Trade mark laws generally deny registration to signs that are contrary to public policy and accepted principles of morality.

Answer 28

False

Question 29

True or False?

“Banking operations” for banking services is descriptive, thus not distinctive.

Answer 29

True

Question 30

True or False?

“Apple-Pineapple” for fruity juices describes the composition of the product, thus is not distinctive.

Answer 30

True

Question 31

True or False?

A figurative sign representing Jesus Christ on his cross for labels of wines in some countries may be culturally offensive.

Answer 31

True

Question 32

True or False?

“Barack Obama” for wine can be registered without the consent of that living and famous person

Answer 32

False

Question 33

True or False?

An owner can surrender his registration only in respect of all of the goods or services.

Answer 33

False

Question 34

True or False?

Relative grounds of refusal relate to the existence of a public interest against the appropriation of a certain sign and therefore can be invoked by any interested person.

Answer 34

False

Question 35

True or False?

Absolute grounds of refusal presuppose the existence of an earlier right of a third party and can therefore be activated only by owner of such earlier right.

Answer 35

False

Question 36

True or False?

Signs that are in bad taste can be registered.

Answer 36

True

Question 37

True or False?

A trade mark, which has been validly registered, may become deceptive as a consequence of the use made by its owner on the market.

Answer 37

True

Question 38

True or False?

This was the correct answer
No evidence of use is required at filing for a registration renewal, as it is considered that the mere fact of looking for the renewal is evidence enough on the interest on continuing using the trademark.

Answer 38

True

Question 39

True or False?

A sign cannot be registered if it is contrary to accepted principles and values such as freedom or human rights.

Answer 39

True

Question 40

True or False?

This was the wrong answer
Trade marks that should be excluded from registration due to contradiction with accepted principles of morality are only those containing blasphemous and insulting words or phrases.

Answer 40

False

Question 41

What are the kinds of requirements w.r.t. the criteria of registerability for a sign to be registered as TM?

Answer 41

1. Distinguish the goods or services of one enterprise from the goods or services of other enterprises.
2. Possible harmful effects of a trademark if it has a misleading character or if it violates public order or morality.
3. Existence of earlier rights of third parties, which may prevent the registration on the trademark, where opposition proceedings are provided for the applicable law or justify the cancellation of trademarks already granted.

Question 42

On what parameters, does an authority need to judge for representation of a Trademark?

Answer 42

7 specific criterion given by Sieckmann are applicable 1. Clear,

2. Precise,
3. Self-contained,
4. Easily accessible,
5. Intelligible Differentia,
6. Durable and
7. Objective

Question 43

What are the grounds for refusal of registration of trademark or invalidity of trademark registration as per Article 4 of the new directive?

Answer 43

The following shall not be registered or, if registered, shall be liable to be declared invalid.

(a) signs which cannot constitute a TM;
(b) TMs which are devoid of any distinctive character;
(c) TMs which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;
(d) TMs which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade

Question 44

How do you determine whether or not a mark has acquired distinctive character in the market?

Answer 44

1. The market share held by the mark,
2. How intensive geographically widespread and long-standing has been,
3. The amount invested by the undertaking in promoting the mark,
4. The proportion of the relevant class of the person who because of the mark identify the good as originated from a particular undertaking and statements from chambers of commerce or industry or other trade and professional associations.

Question 45

What is tarnishment of TM?

Answer 45

The distinctiveness of a sign is not an absolute and unchangeable factor, depending on the steps taken by the user of the signs or third parties. It can be acquired or increased or even lost. This is called tarnishment of TM.

Question 46

How do you determine whether marks will fall under the category of Descriptive marks?

Answer 46

1. Whether the average consumers are likely to regard a sign as the reference to the origin of the product or
2. Whether they will rather look on it as a reference to the characteristic of the goods or they geographical origin.

Question 47

What is the criteria for suggesting that a sign is Deceptive in nature?

Answer 47

1. A sign which is not inherently deceptive becomes deceptive as a consequence of its use on the market by the owner.
2. Signs that are descriptive or indicative of geographical origin are false for products that do not come from the region described or indicated in such cases the consumer will be deceived if there is a reference to the geographical origin that has the wrong connotation for him.
3. Indeed, even their use of foreign words can under certain circumstances be deceptive without any reference to a specific geographical origin.

Question 48

Discuss a famous example of a deceptive sign.

Answer 48

A famous Swiss mountain for chocolate would still deceive consumers as could as the device a mark consisting of untypical Alpine landscape.

Question 49

What is the general rule when a trademark sign and public policy/morality are at juxtaposition?

Answer 49

TM laws generally deny registration to signs that are contrary to public policy or accepted principles of morality. The TM cannot be registered If it’s contrary to accepted principles human dignity, freedom, equality and solidarity as well as the principles of democracy and the rule of law.

Question 50

What are the cases when a previously granted trademark ceases to operate?

Answer 50

1) Surrender by owner
- Partial Surrender of Goods and Services
- Fully surrender of Goods and Services
2) Declaration of invalidity and
- Absolute Refusal & - Relative Refusal
3) Declaration of revocation.
- A revocation for non-use,
- Revocation for becoming generic and
- Revocation for becoming deceptive.or contrary to law, public policy and morality.

Question 51

What are various symbols related to trademark registration?

Answer 51

1. For Registered Trademark: R having outside circled in superscript after the marks/sign/words
2. For unregistered Trademark, when the trademark application is under-process of scrutiny: TM in superscript after the marks/sign/words
3. For unregistered Servicemark, the Servicemark application is under-process of scrutiny: SM in superscript after the marks/sign/words

Question 52

What are the cases when trademarks enjoying protection under Article 6(a) of Paris Convention may be denied registration or invalidated?

Answer 52

1. When they are of such nature as to infringe rights acquired by third parties in the country where protection is claimed;
2. When they are devoid of any distinctive character;
3. When they are contrary to morality or public order and, in particular, of such a nature as to deceive the public

Question 53

What are the essentials for a sign to be registered as a trademark?

Answer 53

The sign does not consist exclusively of the shape or another characteristic which results from the nature of the goods themselves or the shape or another characteristic of goods which is necessary to obtain a technical result and third shape or another characteristic which gives substantial value to the goods.

Question 54

According to EU Directive 2015/2436 on the Laws relating to trademarks, what are the signs that a trade mark may consist?

Answer 54

According to Article 3, a trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

Question 55

In which case, the Court of Justice of the EU recognized the requirement of Sieckmann criterion?

Answer 55

Ralf Sieckmann v Deutsches Patent und Markenamt

Question 56

What is the objective behind the graphic representation of a sign to be registered as trademark?

Answer 56

The object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective.

Question 57

What do you understand by the requirement of distinctiveness?

Answer 57

The test whether the trademark is distinctive is bound to depend on the understanding of the average consumer of goods or services covered by application or at least the persons to whom the sign is addressed. The average consumer is deemed reasonably, well informed and reasonably observant and circumspect. The distinctiveness of a sign is not an absolute factor.

Question 58

What are the two classes of distinctive marks?

Answer 58

The law recognizes two classes of distinctive marks:

1. Inherently distinctive that is arbitrary, fanciful, suggestive marks.
2. Marks that have acquired distinctiveness.

Question 59

What is the advantage of using coined/fancy words in trademark registration?

Answer 59

Coined words have the advantage of being easy to protect as they are more likely to be considered inherently distinctive. Unlike suggestive marks, the risk of conflict with other existing marks is small. KODAK is a popular example.

Question 60

What is the purpose of prohibition of registration of purely descriptive signs or indication?

Answer 60

To prevent registration as trademarks of signs or indications which because they are no different form they usually way of designating the relevant goods or services or the characteristic could not fulfill the function of identifying the undertaking that markets them and are does devoid of the distinctive character that need it for that function.

Question 61

Define descriptive signs.

Answer 61

Descriptive signs are those that serves in trade to designate the kind, quality, intended purpose, value, place of origin, time of production, or any other characteristic of the goods for which the sign intended to be use or is being used

Question 62

What is the drawback of unused trademarks?

Answer 62

Unused trademarks are an artificial barrier to the registration of new marks. There is an absolute need to provide for a use obligation in trademark law.

Question 63

What is the principle consequence of unjustified non-use of a trademark?

Answer 63

The grace period granted in the trademark laws that provide for a use obligation is sometimes three years but more often five years in many countries. The principle consequence of unjustified non-use is that the registration is open to cancellation at the request of a person with a legitimate interest

Question 64

In a proceeding related to unused trademark, on which party does the burden of proof lie?

Answer 64

The burden of proof should be on the trademark owner not only in cancellation proceedings but also in any other proceedings where the owner is alleged to have taken advantage of his unused trademark right.