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Transcript of trade marks introduction_reduced size
What is a trade mark?
a b n 23 601 715 600
Matthew Hall
© i p protection ® governance © policy ® compliance © commercialisation ® strategy
January 2016
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
provided the sign can be represented graphically, or described with sufficient certainty in words
CHANEL
Protects words,
images, colours, shapes,
sounds & other
“signs”
®
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
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
the “first user” of the mark on the goods or services Who is
the owner?
or the
“same kind of thing”
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
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
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
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?
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?
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)
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
© 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