Unit 4.3 – Grounds for Refusal and Opposition Flashcards
3 Aspects of
Trade Mark
Application
➢ 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.
Four Requirements for Registration of a Trade Mark
➢ 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.
What are the consitions under which a trade mark application is ought only to proceed to registration?
➢ 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.
Steps to Trade Mark Infringement – Section 34(1)(a) – (b)
➢ 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.
Disqualification from Registration:
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.
The Two Sides of Section 10
➢ 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
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.
➢ 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
Grounds for Registration Refusal and Opposition
❖Lack of intrinsic registrability
❖ Prohibited Marks (sections 10(8) & (9) & (10))
❖ Proprietorship and not in Good Faith
❖ Subject of third-party rights
Lack of intrinsic registrability
➢ 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).
Prohibited Marks (sections 10(8) & (9) & (10))
➢ National flags and symbols.
➢ Indicating State patronage.
➢ Specifically prohibited in the Trade Mark Regulations.
Proprietorship and not in Good Faith
➢ Not filed by the proprietor – s 10(3)
➢ No bona fide intention to use – s 10(4)
➢ Bad faith – s 10(7)
Subject of third-party rights
➢ 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
Expansion on 3rd Party Rights
❖ Section 10(6) – Well Known Foreign Trade Mark
❖ Section 10(12) – Protecting Public from Deception
❖ Section 10(14)
❖ Section 10(15)
Section 10(6) – Well Known Foreign Trade Mark
➢ 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
Article 6bis of the Paris Convention
▪ 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.
A Key Factor of Section 10(6) NB!
The factors required must be shown to have been
present at the time when the application was filed.
What kind of deception does Section 10(12) cater for?
▪ Confusion which could be dangerous to the public.
▪ Trade marks could be deceptive as to the geographical
origin of the goods
The steps in the court’s assessment of ‘inherently deceptive’
includes (NB):
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.
Being successful on grounds of Section 10(14)
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.
A possible defense ito s10(4)
▪ 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.
Section 10(15)
➢ 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.
❖ Time Lines (3 Steps)
-
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. -
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.
- Section 34 Infringement
Steps:
* Registered Trademark: The trademark must be registered.
* Use: The trademark is being used in a way that constitutes infringement.
Section 24 – Grounds for Rectification
➢ 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.
Section 26
➢ 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.
