trade marks introduction_reduced size
TRANSCRIPT
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What is a trade mark?
a b n 23 601 715 600
Matthew Hall
© i p protection ® governance © policy ® compliance © commercialisation ® strategy
January 2016
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in brief 45 classes of goods & services National coverage
Registered for 10 years Renewed for further terms of 10 years You obtain exclusive rights only in 2 ways:
- use - as a registered trade mark
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provided the sign can be represented graphically, or described with sufficient certainty in words
CHANEL
Protects words,
images, colours, shapes,
sounds & other
“signs”
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®
Grants exclusive right to use the sign on or in connection with the goods or services in respect of which it is registered
Protects the reputation (& value) in a “sign” that is used as a badge of origin
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What is needed
® Filed by the “owner”
® Mark is distinctive (either inherently or acquired through use)
® Is not “substantially identical” or “deceptively similar” to any other registration or earlier application for same/similar goods/services
® Does not contain a “prohibited” sign
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the “first user” of the mark on the goods or services Who is
the owner?
or the
“same kind of thing”
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when used on a t-shirt: “an exhortation to relax”; it did not indicate provenance or any connection in trade
USE
a fundamental
concept in trade mark
law Used to distinguish between the qualities of these chips & those produced other than by way of
kettle cooking
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DISTINCTIVE Must not be directly descriptive of character or quality or a term other traders have a LEGITIMATE right to
use to describe their similar goods or services
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The trader must DO SOMETHING in its use to identify the sign as a
TRADE MARK
The fact that consumers associate (a colour) with (a trader) does not make (the colour) distinctive
Colours &
shapes
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Will other traders think of the shape & want to use it for those significations?
SHAPES
What makes them
distinctive?
Does the shape have any ordinary significations?
For example, is it functional, or dictated by physical requirements?
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Does the public rely on the appearance (of the shape or colour) ALONE to identify the goods? OR
Is the shape or colour separate from & additional to the goods?
Does the public recognise the appearance but does not treat that appearance as a trade mark?
What does it mean?
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It is NOT an international registration
The Madrid system
or the
Protection is still obtained country by country
But protection is sought in multiple countries through a SINGLE application filed with the World Intellectual Property Organisation (WIPO)
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Will other traders think of the shape & want to use it for those significations?
More on the
Madrid system
Does the shape have any ordinary significations?
For example, is it functional, or dictated by physical requirements?
® Local rules for registration, and validity, continue to apply
® Different countries charge different fees, in addition to fees charged by WIPO
® All communications are co-ordinated through WIPO
® An applicant only needs to engage local agents (& incur their costs) if local issues arise
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© i p protection ® governance © policy ® compliance © commercialisation ® strategy
For more information, or any help, please contact:
Matthew Hall managing director
solicitor & registered trade mark attorney