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Intellectual Property Law Notes, Exams of Intellectual Property (IP)

Dr. Ram Manohar Lohia National Law University Intellectual Property (IP)

Notes that'll help you pass your exams.

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IP Law 2007-2008: Trade Marks

Alice Lee Ken TC Lee

1

TRADE MARK

1. Introduction

(i) Application for registration: s.38, TMO (Cap 559) !

(a) a request for registration of the trade mark;

(b) the name and address of the applicant;

(c) a statement of the goods or services

- S.40: Goods and services to be classified according to a “prescribed

system of classification”

- From 1 Jan 2007: Nice Classification (9th ed)

(d) a representation of the trade mark; and

(e) such other information, documents or matter as may be required by the rules.

(ii) Examination: IF requirements met

! Registrar shall examine whether the application satisfies the requirements for

registration under TMO: s.42(1), TMO

! If application accepted by Registrar, particulars of application would be published

in Official Journal in accordance with the rules

- Implications: Have to check from time to time to raise opposition against

marks similar to clients’

(iii) Examination: IF requirements NOT met

! Registrar would inform the applicant by notice in writing: s.42(3), TMO

- TMR Rule 13(2): Applicant may, within 6 months, file written

representations to establish that the requirements arte met; ore amend his

application so as to meet those requirements

- Registrar may EXTEND time for filing written representations for one further

period of 3 months: TMR Rule 13(3)

(iv) Opposition

! s.44, TMO: Give notice under s.43, TMO to Registrar for opposition to

registration; within prescribed period beginning on date of publication of

particulars of application in Official Journal

! TMR, Rule 16

- “Prescribed period”: 3 months from date of publication

- Notice shall include statement of ground of opposition

(v) Applicant’s Counter-statement

! Within 3 months after receipt pf copy of notice of opposition: Rule 17(1)

- Otherwise, application deemed to have withdrawn: Rule 17(4)

- Registrar may extended period by 2 months: Rule 17(3)

- Registrar may stay proceedings on his own initiatives or on request of a party:

Rule 90

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Alice Lee Ken TC Lee

TRADE MARK

1. Introduction

(i) Application for registration: s.3 8 , TMO (Cap 559)! (a) a request for registration of the trade mark; (b) the name and address of the applicant; (c) a statement of the goods or services

S.40 : Goods and services to be classified according to a “prescribed system of classification”
From 1 Jan 2007: Nice Classification ( th ed) (d) a representation of the trade mark; and (e) such other information, documents or matter as may be required by the rules. (ii) Examination: IF requirements met ! Registrar shall examine whether the application satisfies the requirements for registration under TMO: s.42(1), TMO ! If application accepted by Registrar, particulars of application would be published in Official Journal in accordance with the rules
Implications: Have to check from time to time to raise opposition against marks similar to clients’ (iii) Examination: IF requirements NOT met ! Registrar would inform the applicant by notice in writing: s.42(3), TMO
TMR Rule 13(2): Applicant may, within 6 months, file written representations to establish that the requirements arte met; ore amend his application so as to meet those requirements
Registrar may EXTEND time for filing written representations for one further period of 3 months: TMR Rule 13(3) (iv) Opposition ! s.44, TMO: Give notice under s.43, TMO to Registrar for opposition to registration; within prescribed period beginning on date of publication of particulars of application in Official Journal ! TMR, Rule 16
“Prescribed period”: 3 months from date of publication
Notice shall include statement of ground of opposition (v) Applicant’s Counter-statement ! Within 3 months after receipt pf copy of notice of opposition: Rule 17(1)
Otherwise, application deemed to have withdrawn: Rule 17(4)
Registrar may extended period by 2 months: Rule 17(3)
Registrar may stay proceedings on his own initiatives or on request of a party: Rule 90

Alice Lee Ken TC Lee

2. Relative Grounds: s.12, TMO

(1) A trade mark shall not be registered if- (a) the trade mark is identical to an earlier trade mark; and (b) the goods or services for which the application for registration is made are identical to those for which the earlier trade mark is protected. (2) A trade mark shall not be registered if- (a) the trade mark is identical to an earlier trade mark; (b) the goods or services for which the application for registration is made are similar to those for which the earlier trade mark is protected; and (c) the use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public. (3) A trade mark shall not be registered if- (a) the trade mark is similar to an earlier trade mark; (b) the goods or services for which the application for registration is made are identical or similar to those for which the earlier trade mark is protected; and (c) the use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public. (4) Subject to subsection (6), a trade mark which is- (a) identical or similar to an earlier trade mark; and (b) proposed to be registered for goods or services which are not identical or similar to those for which the earlier trade mark is protected, shall not be registered if, or to the extent that, the earlier trade mark is entitled to protection under the Paris Convention as a well-known trade mark and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. NB: Opposition under ss.(4) and (5) have to be raised by s.44 opposition proceedings: see s.12(6),TMO

For other grounds: could be raised by Registrar
Definition “earlier trade mark” ( s.5(1), TMO ) (a) a registered trade mark with an earlier date of the application taking into account priorities claimed in respect of each TM; or (b) a trade mark entitled to protection under the Paris Convention as a well- known trade mark
NB for (a): “ Claim to priority” under s.41, TMO o A person who has duly filed an application for registration in or in respect of a Paris Convention country or WTO member shall enjoy a right of priority for a period of 6 months beginning on the date of filing of the 1st^ of any such applications, subject to compliance with any prescribed conditions

Alice Lee Ken TC Lee ! Galway Int’l Application re mark “Vica” [1962]

Applicant: “Vica” for vitamin tablets; Opponent: “Vicks” registered for treatment / prevention of colds, affections of the throat and nasal passages Held: for P; likely to confuse; Application refused
Approach in Pianotist and Rysta Ltd’s Application followed
Relevant factors: cheap products [can be purchased without prescription]; Noise and bustle of shops; Imperfect speech of purchasers (esp. non-native English speakers)
NB: Burden of proof NOW on Opponent: see “Audi-Med” ; Oasis Stores ! Montres Tudor v Concord (No.1) and (No.2) [2001]
NO likelihood of confusion as product involved were watches o Expensive item: NO impulse purchase (ii) Similar goods [NB: Same meaning as old expression “same description of goods”] ! Factors relevant in considering whether there’s similarity ( British Sugar )
Respective uses of the respective goods
Respective users of the respective goods
Physical nature of the goods
Respective trade channels through which the goods reach the market
Self-serve customers items: where in practice they are respectively found or likely to be found on supermarkets
Extent to which the respective goods are competitive, e.g. how those in trade classify goods ! As elaboration upon old judicial test in Jellinek’s Application : Nature of goods; respective uses of goods; trade channels through which goods are sold
Used in interpretation of old s.20, TMO: World Investment Co Ltd v Registrar of Trade Marks o “Clothes” vs “singlets” o “Clothes”: things worn to cover the body and limbs; “Singlets” clearly within the category of clothes [Under New Shorter English Dictionary] o Respective uses of goods: both worn as garments o Trade channels: both are sold in shops and department stores o Held: NO real distinction; goods of same description ! British Sugar case:
P had registered “TREAT” for “dessert sauces and syrups”
D had launched a sweet spread “Robertson’s Toffee Treat”
P sued D for infringement [NB: same criteria to determine infringement of TMs, i.e. identical marks for identical / similar goods] o NOT identical goods: as goods NOT in same class [P’s in Class 30; D’s in Class 29] Held: NO identical goods: given nature og goods and how they are sold

Alice Lee Ken TC Lee (iii) Likelihood of confusion ! s.7(1), TMO: In determining whether the use of a mark is likely to cause confusion on the part of the public, Registrar and court may consider all relevant factors in the circumstances, including whether the use is likely to be associated with the use of the earlier mark ! Sabel BV v Puma AG (1998 ECJ)

Likelihood of confusion must be appreciated globally, considering all factors relevant to the case
Based on overall impression [in the mind of the average consumer of the type pf the goods or services] given by the marks, particularly their distinctiveness and dominant components o NB: Likelihood of association NOT alternative to, but is merely a possible element of, likelihood of confusion o Also confirmed in HK Trade Marks Registry Work Manuel [which reflects the practice of the Registrar: i.e. the question is one of confusion as to source, NOT whether likely to make association] (iv) Well-known TMs

Define “well-known mark” : S.4, TMO (1) TM must be well known in HK and TM of a person who- (a) is a national of, or is domiciled or ordinarily resident in, a Paris Convention country or WTO member; (b) has a right of abode in Hong Kong; or (c) has a real and effective industrial or commercial establishment in a Paris Convention country, a WTO member or Hong Kong, whether or not that person carries on business in Hong Kong or owns any goodwill in a business in Hong Kong. (2) In determining whether a trade mark is well known in Hong Kong, the Registrar or the court shall have regard to Schedule 2. [Considerations include:]

degree of knowledge or recognition of TM in the relevant sectors of public [see General Motors case: referred to as public concerned to those product]
duration, extent and geographical area of any use of TM
duration, extent and geographical area of any promotion of TM, including advertising or publicity and presentation of goods or services at fairs or exhibition
duration and geographical area of any registration, or any applications for registration, of TM, to the extent that they reflect use or recognition of TM o [Registration NOT necessary, BUT relevant considerations]
value associated with TM

Alice Lee Ken TC Lee Inlima SL’s Application for a 3-Dimensional Trade Mark [2000] RPC 661

Drink bottle in the shape of a football boot, with 6 lines on each side of the “boot”
Opposed by Adidas (owner of mark consisting of 3 equally spaced strips) Held: Opposition succeeded
Merely establishing a link with Opponent’s mark insufficient
Opponent must establish that the link leads to a transfer of value or repute from Opponent to Applicant o Applicant’s specification covered isotonic drinks: Establish a “sporting connection” such that consumers would be likely to believe that there was some connection in trade between parties (v) Other relative grounds s.12(5), TMO: (5) Subject to subsection (6), a trade mark shall not be registered if, or to the extent that, its use in Hong Kong is liable to be prevented- (a) by virtue of any rule of law protecting an unregistered trade mark or other sign used in the course of trade or business (in particular, by virtue of the law of passing off ); or (b) by virtue of an earlier right other than those referred to in paragraph (a) or in subsections (1) to (4) (in particular, by virtue of the law of copyright or registered designs ), and a person thus entitled to prevent the use of a trade mark is referred to in this Ordinance as the owner of an "earlier right" in relation to the trade mark. [NB: Have to be raise in s.44 opposition proceedings: see s.12(6), TMO] For s.12(5)(a),
NOT insufficient to raise mere allegation: BOP on Opponent to satisfy Registry on evidence that passing off exited
I.e. evidence required to establish reputation + misrepresentation leading to likelihood of confusion
See CODAS Trade Mark [2001]; Altecnic Ltd’s Trade Mark Application [2001]; Harrison’s Trade Mark Application [2004] For s.12(5)(b),
Word mark: NO © in “Ana Frank”; NO © even in title of book on its own: see ANNA FRANK Trade Mark [1998] ! BUT see Guangdong Foodstuffs v Tung Fook Chinese Wine [2001]: © in picture, which formed part of logo of company [Opposition also raised on ground of passing off] S.12(7), TMO: [Objection to SOME goods or services only] S.12(8), TMO: [Consent is KING] [ cont’d ]

Alice Lee Ken TC Lee HK Trade Mark Registry Work Manual Factors to be considered when examining application for registration with consent of the earlier TM:

Consent for use and registration of TM for all goods / services in application?
Consent only for some of the goods?
Consent covers HK?
Consent in writing and signed by the earlier TM owner?
Consent unconditional? (vi) EXCEPTIONS: S.13(1), TMO S.13(1)(a), TMO: Honest concurrent use of the trade mark and earlier mark See Pirie’s Application [with elaboration from HK Trade Mark Registry Work Manual , “ Consent, honest concurrent use and other special circumstances ”] ! [ NB: factors NOT exhaustive] (1) Extent of use in time and quality and area of trade o Length of time in which mark used in HK o Volume of goods sold or turnover or services in relation to the extent of the market
E.g. relatively low volume of goods sold in the clothing market would need to e supported by long use
C.f. Relatively low sales of surgical instruments for use in specialised medical field would support an application based on comparatively short use " I.e. nature of business matters (2) Degree of confusion likely to ensure from resemblance of the marks, i.e. public inconvenience o Indicative of the measure of public inconvenience (3) Honesty of concurrent use o When applicant’s mark has been in long use, or the use began prior to application for registration of the cited mark, the honesty of the applicant’s use may be o C.f. Honesty of the applicant’s use may be doubted where his mark was copied from the earlier mark, or where it was identical or very similar to the earlier mark, and the applicant does not satisfactorily explain why he adopted his mark (4) Any instances of actual confusion o Fact that commercial user has NOT produced any proof of confusion cannot be regarded as unimportant even though allowance be made for difficulty of proof

Alice Lee Ken TC Lee

3. Absolute Grounds: s.1 1 , TMO

(1) Subject to s.s(2), the following shall not be registered (a) signs which do not satisfy the requirements of s.3(1) (meaning of “trade mark”) (b) trade marks which are devoid of any distinctive character (c) trade marks which consists exclusively of signs which may serve to designate the kind, quality, quantity, intended purpose , value geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services [i.e. descriptive] (d) trade marks which consist exclusively of signs which have become customary in the current language or in the honest and established practices of the trade (2) A trade mark shall not be refused registration under ss.(1)(b) – (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it. [i.e. Could acquire distinctiveness after use] (3) A sign shall not be registered as a trade mark if it consists exclusively of- (a) shape that results from nature of goods themselves (b) shape that is necessary to obtain a technical result (c) shape that gives substantial value to the goods (4) (a) Contrary to accepted principles of morality (b) Likely to deceive the public (5) (a) Its use is prohibited in HK under any law (b) Application for registration is made in bad faith NB: Some overlap with s.12(5), TMO [Relative ground] for marks whose use is prevented in HK by any law protecting unregistered TM, esp. passing off

BUT passing off concerns only deception related to origin of goods
There could be other types of deception, e.g. about quality “All wool” for clothing not made of wool
Use may also be objectionable on grounds other than deception, e.g. prohibition of use of marks which amounts to offence under Trade Description Ordinance ( 6 ) (a) National flag; (b) National emblem; (c) Regional flag; (d) Regional emblem ( 7 ) National flag or emblem of a Paris Convention country or WTO member (s.64), or emblems of certain int’l org (s.65) (8) [Allow refusal for only SOME of the goods / services for which the application is made]

Alice Lee Ken TC Lee S.11(1)(a), TMO S.11(1)(b), TMO

- Signs which do not satisfy the requirements of s.3(1) (meaning of “trade mark” S.3(1): “trade mark” means any sign which is capable of distinguishing goods /services of one undertaking from those of other undertakings and which is capable of being represented graphically

Matter of defining “trade mark”
As reference to generic signs (not TM)
E.g. “Soap” for soap (example in British Sugar ); 3-dimensional booklet substantially square in format ( Wicke’s Plc’s TM Application ) - Trade marks which are devoid of any distinctive character
Matter of registrability
From least distinctive, e.g. laudatory words (e.g. “Good”, “Prefect”); descriptive words (e.g. “Clean” for detergent) [Need to acquire distinctiveness from actual use]
To most distinctive, e.g. invented words “Exxon” ! 2 nd requirement under s.11(1)(a) : “… capable of being represented graphically”
- Swizels Matlow Ltd’s Application [1999] o NOT restrict means of representation, e.g. by way of writing, drawing, musical notation, written description or any combination

Smell marks: Contrasting cases

John Lewis of Hungerford Ltd’s Application [2001] o “Smell, aroma or essence of cinnamon” for furniture: Relies on reader’s experience or perception o Perception liable to vary according to the nature, purity, concentration, quantity, age and temperature of the relevant material (cinnamon)
Venootschap onder Firma Senta [1999] Community TM o “Smell of fresh cut grass” for tennis balls [ NB: NOT int’l standard for smell, see Eden case ]

S.11(1)(b), TMO: Devoid of distinctive character

John Lewis of Hungerford Ltd’s Application [2001] o P had registered “TREAT” for “dessert sauces and syrups” o D had launched a sweet spread “Robertson’s Toffee Treat” - P sued for infringement under equivalent of s.18, TMO - D counterclaimed that P’s registration was invalid under s.11(1)(b) for not capable of being distinguishing Held: [ cont’d ]

Alice Lee Ken TC Lee

“JANE AUSTEN” Trade Mark [2000] o Applicant applied to register “JANE AUSTEN” in respect of toiletries: Applicant had NOT used mark o Application opposed by trustees of Jane Austen Memorial Trust, who owned Jane Austen’s house and museum and had developed trade in souvenirs relating to deceased author, her life and works, on the ground that the mark was devoid of any distinctive character under s.11(1)(b) o Registrar refused to register on grounds that TAR not invented word; direct reference to character and quality of goods; NOT as an indication Held: o Agree with argument of opponent: - If a well-known individual’s name was likely to result in a demand for memorabilia or commercial consumer items, then the general public were not likely to see that name as indicating trade origin, but rather as an indication of the content or character of the goods in question o Factors affecting how a given name may be perceived [i.e. become descriptive] [for literary or artistic figures]: NOT exhaustive - Nature and extent of individual’s reputation - Whether any surrounding reasons why a trade in souvenirs may have developed, e.g. because an individual’s strong association with an area or a particular style - Whether individual established any TM rights during lifetime [for contemporary figures] - Whether any existing trade in souvenirs, memorabilia etc. exists, or (for someone recently deceased) can be expected to arise - Whether descendants, estate, trustees or other such body have, through use, established any rights in relation to name of individual (and if so, whether to exclusion to others) - Extent to which life and works of the individual are kept alive either by general public interest or media coverage etc in such a way as to generate demand for commercial consumer items - Nature of goods with respect of which registration is sought (see e.g. doubts by CA for application of objection to TARZAN toys) o Well known literary figure (e.g. William Shakespeare): Likely to be a high level of demand for commercial consumer items generated by his widespread fame; name or image highly unlikely to be an indicator of trade origin for a broad range of souvenir type items o C.f. Names of literary figures of somewhat lesser repute or whose memory is less well preserved may be capable of fulfilling the functions of a trade mark - On facts: As is apparent from the evidence, there is continuing interest from television companies and the novels have been turned into major television series and films

Alice Lee Ken TC Lee

Unless educated through use to see the name differently, the public will not in my view regard it as a badge of origin
Opposition succeeds under s.3(1)(b) NB: Reference to UK Trade Marks Registry Work Manual: "Full names have, by their nature, a greater capacity to distinguish the goods/services of one undertaking than a surname per se. The registrar takes the view that, unless the full name is extremely common , e.g. JOHN SMITH and the number of traders involved in the relevant market is very large , e.g. clothing, the likelihood of a number of different traders using the same full name as a badge of origin is sufficiently remote that the public are likely to take a full name as a sign which indicates goods or services from a single source. Such marks will therefore usually be accepted prima facie." [See also HK Trade Marks Registry Work Manual , “Registrability of surnames, personal names, signatures and images of individuals”]

S.11(1)(c), TMO: Exclusively descriptive

“EUROLAMB” (lamb meat): EUROLAMB Trade Mark [naming below as such]
“FRESH BANKING” (goods & services relating to banking) o “Fresh” was apt to describe a new banking service and, accordingly se3rved to designate intended purpose
“FROOT LOOPS” (cereals containing fruit) o “froot”: Phonetic equivalent of “fruit”; mark as a whole designate the kind of goods, i.e. fruit or begin fruit flavoured
“DAY BY DAY” (milk and milk products)
“BABY DRY” Case (disposable diapers) (ECJ) o Held: “ whilst each of the two words may form part of expressions used in everyday speech to designate the function of babies’ nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies’ nappies or for describing their essential characteristics” o Cited in MGA Entertainment v Yokon International Ltd (2006 HK) # P has registered “BRATZ” for dolls and dolls accessories # Ds challenged validity of P’s registration by contending that “BRATZ” was a play on “BRATS”, which means an ill-behaved child, thus descriptive # Held: NOT descriptive of goods in question, but children who play the dolls

Alice Lee Ken TC Lee

Relevant factors: o Market share of the mark o geographical and temporal extent of use o amount of promotional effort o extent of recognition by relevant public o statements from traders in the field

S.11(3): Shape Marks

A sign shall not be registered as a trade mark in relation to goods if it consists exclusively of – (a) shape that results from the nature of the goods themselves [HK TMR Manual: For basic or organic shapes ONLY

E.g. shape of an egg tray dictated by need to accommodate the shape of eggs; see also Book case] (b) shape of goods that is necessary to obtain a technical result [Functional shapes: “functional” in the sense that the shape is the result of technical considerations, i.e. Patents
Objection is NOT overcome by showing that other shapes are capable of producing the same technical result: Philips v Remington [NOT absolute “necessity”]
Philips v Remington : Failed to register “three-headed shape” of shaver (c) shape that gives substantial value to the goods [Aesthetic type shapes, i.e. shapes which appeal to the eye; As registered design!!
NOT perform TM’s function of designating trade origin Sony Computer Entertainment v Registrar of TMs
Applied to register shape of Play Station consoles and accessories under old TMO, Cap 43 [as shape marks allowed in HK since 1996]
Judge agreed with Registrar that the shape of the consoles was essentially that a “flat rectangular box”, which was necessary for the obtaining of a technical result [i.e. putting console stably on flat surface, and safely containing the components inside]
Objection under s.11(3)(b) upheld Re Movado Watch Co SA [2003]
Application to register 3D disc with a smaller concave circular section in 12 o’clock position
Objected to under ss.(b) as trader chose this sign, believing that this would be appealing to the eye

Alice Lee Ken TC Lee

S.11(4)(a): Contrary to morality

Ghazilian’s Trade Mark Appn (“TINY PENIS”) [2002] RPC 628, following Masterman’s Design [1991] RPC 89

Contrary to morality if it is plain that the sign is of such nature that its use would offend the moral principles of right-thinking members of society
Mere offence to a section of the society that the sign is distasteful, insufficient FCUK Trade Mark [2007] RPC 1, citing Basic Trademark SA’s Appn (“JESUS”) & Scranage’s Trade Mark Appn (“FOOK”)
NB in Scranage’s Case : Sign objected to as slang similar to the “FXXX” word
Cf. Use in Hong Kong: As “Fortune”

S.11(5)(b) bad faith

Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] “Bad faith … includes dishonesty and … some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined.”
Also bad faith if application is made by someone who is not entitled to the mark: see CA Sheimer (M) Sdn Bhd’s TM Application [2000] o Taking unfair advantage of the previous registered mark; NB also protection for “well-known” TMs
SAXON Trade Mark [2003] FSR 704 o Departing member of a band had registered “SAXON” (name of band) for music-related products and services o Held: Bad faith if “ proprietor of mark, having no existing title to the mark, had registered it with the intention of interfering with the rights of others who did and had consistently used the mark ”

3. DURATION OF REGISTRATION

Rights of owner of a registered trade mark have effect from the date of registration of the trade mark: S.14(3), TMO
TM shall be registered for a period of 10 years beginning on its date of registration: S.49(1), TMO
- Filing date of application deemed to be date of registration: S.
- Registration may be renewed in accordance with s. 50 for further periods of 10 years: S.49(2) (i) Renewal: S.50, TMO (1) The owner of a registered TM may, in the prescribed manner, request renewal of the registration, subject to payment of prescribed renewal fee

Alice Lee Ken TC Lee assignment or any extended period allowed by Registrar, applies to Registrar for directions with respect to advertisement of assignment ! NO such requirement under new TMO (3) An assignment or other transmission of a registered trade mark may be partial, that is, limited so as to apply - (a) in relation to some but not all of the goods or services for which the trade mark is registered; or (b) in relation to use of the trade mark in a particular manner or in a particular locality [i.e. manner and locality of use] Formality requirement: (4) An assignment of a registered trade mark is not effective unless it is made in writing and is signed by or on behalf of the assignor (ii) Licensing: S.33, TMO (1) A licence to use a registered TM may be general or limited (2) A limited licence may, in particular, apply - (a) in relation to some but not all of the goods or services for which the trade mark is registered; or (b) in relation to use of the trade mark in a particular manner or a particular locality (3) A licence is not effective unless it is in writing and is signed by or on behalf of the grantor (iii) Registration of Transactions

Assignment or a licence is a registrable transaction: S.29(2)
Person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction can apply for registration of the transaction ! Prescribed particulars of transaction shall be entered in register: S.29(1) Trade Marks Rules, r. 62 (1) Application shall be filed on the specified form i.e. Form T (2) To register an assignment, the application shall EITHER
Signed by / on behalf of the assignor OR
Accompanied by such documentary evidence as suffices to establish assignment, i.e. NO need to provide assignment if properly signed [C.f. S.27(4): Assignment to be signed by or on behalf of assignor ] (3) To register a licence, the application shall EITHER
Signed by / on behalf of the grantor OR
Accompanied by such documentary evidence as suffices to establish licence
Significance of registration: S. 29 (4) [Necessary to get remedy in case of infringement] [ cont’d ]

Alice Lee Ken TC Lee (4) Where a person becomes the owner or a licensee of a registered trade mark by virtue of a registrable transaction, then unless - (a) an application for registration of the transaction is made before the end of the period of 6 months beginning on the date of the transaction; or (b) the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter, he is not entitled to damages or an account of profits in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the prescribed particulars of the transaction are registered

Also Significance under s.29(3) for priority: (3) Until an application has been made for registration of the prescribed particulars of a registrable transaction – (a) the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of the transaction (b) a person claiming to be a licensee by virtue of the transaction does not have the protection of S.35 [Rights of licensees generally]; S. 36 [Rights of certain exclusive licensees]; S. 37 [Rights of sub-licensees under certain exclusive licences] [For (a), e.g. A assigns to B, who fails to register; A then assigns or grants a licence to C, who is ignorant of the assignment o Kerly (2001): Even non-exclusive licence may be conflicting; NO requirement that C must have given consideration Summary
Assignment signed by assignor: Otherwise not effective between parties
Application for registration (signed by both): Otherwise not entitled to remedies & not effective against third parties (ii) Exclusive Licence
Definition: “ A licence, whether general or limited, authorizing the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorized by the licence ” ( s.32, TMO )
Parties may define the scope of the licence: S. (1) An exclusive licence may provide that the exclusive licensee shall, to such extent as may be provided by the licence, have the same rights and be entitled to the same remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment (2) An exclusive licensee has the same rights against a successor in title who is bound by the licence as he has against the person granting the licence

Intellectual Property Law Notes, Exams of Intellectual Property (IP)

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TRADE MARK

1. Introduction

2. Relative Grounds: s.12, TMO

3. Absolute Grounds: s.1 1 , TMO

Smell marks: Contrasting cases

S.11(1)(b), TMO: Devoid of distinctive character

S.11(1)(c), TMO: Exclusively descriptive

S.11(3): Shape Marks

S.11(4)(a): Contrary to morality

S.11(5)(b) bad faith

3. DURATION OF REGISTRATION