1. Trade Mark Application Process

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Questions and Answers

Under which circumstance does the use of a registered trade mark not constitute an infringement?

When used for commercial advertising without comparative elements.

When utilized for artistic expression.

When it is done with the intent to mislead consumers.

When it is a fair use in comparative commercial advertising or promotion. (correct)

Which of the following types of use is explicitly exempt from trade mark infringement according to the provided section?

News reporting or news commentary. (correct)

Use for educational purposes.

Descriptive use of a trade mark.

Use during a public demonstration.

Under what condition is a person deemed not to use a sign in relation to a registered trade mark?

If they use the sign only in advertisements without selling goods.

If they apply the sign to any packaging material.

If they know that the proprietor has not consented to its use.

If they have a reasonable belief of the proprietor's consent. (correct)

What does section 28(4)(b) specifically address in relation to trade mark use?

Non-commercial purpose use. Signup and view all the answers

What constitutes infringement of a registered trade mark?

Using a sign that is identical or similar to a trade mark in relation to similar goods. Signup and view all the answers

Which section provides a defense for using one's own name in relation to a registered trade mark?

Section 28(1)(a) Signup and view all the answers

Which of the following represents a provision allowing for earlier use as a defense in trade mark cases?

Section 28(2) Signup and view all the answers

Which of the following actions is explicitly stated as a way a person uses a sign?

Importing goods under the sign. Signup and view all the answers

Which of the following options is NOT a condition for infringement of a trade mark?

The sign is identical to a trade mark in unrelated services. Signup and view all the answers

Which scenario likely indicates a breach of trade mark rights?

A retail store stocking products with a logo identical to a registered trade mark. Signup and view all the answers

What happens if a trademark application is not compliant during the formalities examination?

The examiner informs the applicant of objections. Signup and view all the answers

Which criteria can lead to the refusal of a trademark application on absolute grounds?

The trademark is devoid of any distinctive character. Signup and view all the answers

During the opposition period, what can individuals do regarding a trademark that has been accepted?

Object to the registration of the trademark by starting an opposition. Signup and view all the answers

What are the absolute grounds for refusal of registration based on Section 7?

Trademarks consisting exclusively of signs that indicate characteristics of goods or services. Signup and view all the answers

What occurs if the grounds of opposition against a trademark are established?

The trademark application is refused. Signup and view all the answers

What is the result if no opposition is filed against a trademark after its publication?

The trademark is registered. Signup and view all the answers

What condition allows a trademark that was initially devoid of distinctive character to be registered?

It has acquired distinctive character through actual use prior to application. Signup and view all the answers

Which of the following accurately describes the substantive examination process?

It determines if the trademark meets absolute and relative grounds for registration. Signup and view all the answers

What is the perspective that should be considered in assessing the similarity of marks?

The perspective of the average consumer exercising care and good sense Signup and view all the answers

Which factor is NOT considered when assessing visual similarity of word marks?

Color schemes of the marks Signup and view all the answers

What is the ultimate conclusion the court must make regarding the similarity of marks?

If the marks are more similar than dissimilar in totality Signup and view all the answers

In regard to assessing marks, what is meant by 'imperfect recollection' of the average consumer?

Consumers do not recall details but remember the general impression Signup and view all the answers

When considering composite marks, what must be evaluated to determine the dominant component?

The size and placement of the textual element versus the device Signup and view all the answers

What aspect is primarily considered when assessing the overall impression of competing marks?

The visual, aural, or conceptual similarities Signup and view all the answers

What must be accounted for when evaluating the technical distinctiveness of a mark?

The individual components' distinctiveness Signup and view all the answers

How do courts typically assess the similarity of marks?

By considering the overall impression rather than precise detail Signup and view all the answers

What is the purpose of the Staywell test in infringement cases?

To compare the fair uses of a claimant’s mark against the defendant’s sign Signup and view all the answers

Which of the following is NOT a defense against trademark infringement?

Using a trademark purely for decoration purposes Signup and view all the answers

According to the provisions on defenses, when is a person exempt from infringing a registered trademark by using an unregistered trademark?

If they have continuously used the unregistered mark before the registration date Signup and view all the answers

What condition must be met for the use of a person's name as a defense in trademark infringement cases?

The use must align with honest practices in industrial or commercial matters Signup and view all the answers

What is necessary for a registered trademark to not be infringed by another registered trademark?

The latter must relate to identical or similar goods or services Signup and view all the answers

What should be considered 'permissible' factors in the third step of the Staywell test?

Consumer perception of both marks involved Signup and view all the answers

Which of the following is a characteristic related to the goods or services that can be indicated without infringing a trademark?

Geographical origin of the product Signup and view all the answers

Which aspect must NOT be satisfied for a use to fall under the non-permissible extraneous factors in trademark infringement assessments?

The use is done in good faith Signup and view all the answers

Study Notes

Trade Mark Application Process

After application, the examiner performs formalities and substantive examinations.
If the application complies, it is published in the Trade Mark Journal.
Anyone can oppose the registration during the opposition period.
Oppositions based on absolute or relative grounds for refusal, mirroring the registrability criteria used during examination.

Absolute Grounds for Refusal of Registration

Trade marks lacking distinctive character or consisting solely of signs designating kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of goods or services are prohibited.

Distinctive Character

Even if individual components aren't inherently distinctive, the mark as a whole can achieve sufficient distinctiveness.
Visual, aural, or conceptual similarity assessments should consider the overall impression, focusing on distinctive and dominant components.
Similarity is a matter of impression, making it difficult to quantify.

Average Consumer Perspective

The perspective of the average consumer, exercising reasonable care and good sense, is considered when assessing distinctiveness and similarity.
This average consumer is assumed to have imperfect recollection, meaning side-by-side comparisons aren't the standard.

Visual Similarity

For word marks, factors like length, structure, overlapping letters, and relative size of elements in common are considered.
For composite marks, the dominance of textual or device elements is assessed based on size, prominence, and distinctiveness.

Use of a Sign for Infringement

A person infringes a registered trade mark when a sign identical or similar to the trade mark is used for similar goods or services, creating a likelihood of confusion for the public.
Sign use includes applying it to goods or packaging, offering goods for sale, importing or exporting goods under the sign, using it on invoices or other business documents, and advertising.

Staywell Test

The Staywell test, applicable to infringement cases, compares the range of notional fair uses of the claimant's mark against the actual use of the defendant's sign.
Extraneous factors are considered at the third step of the Staywell test, differentiating permissible and non-permissible uses.

Trade Mark Defences

Using one's own name or place of business, or descriptive use indicating kind, quality, quantity, etc., is permissible.
Continuous use of the unregistered trade mark prior to the registration date or first use date can be a defence.
Using another registered trade mark for the goods or services it's registered for is permissible.
Fair use in comparative commercial advertising, non-commercial use, and use for news reporting are also defences.

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Description

Test your knowledge on the trademark application process, including the steps of examination and grounds for refusal. This quiz covers key concepts like absolute grounds for refusal and the importance of distinctive character in trademarks.