Trademark Law and Infringement Quiz

Podcast

Play an AI-generated podcast conversation about this lesson

Questions and Answers

What constitutes an infringement of a registered trademark?

Using a trademark that differs slightly.

Creating a similar trademark for non-commercial purposes.

Using a trademark in a different industry.

Using a registered trademark without authorization. (correct)

What must a registered user do to avoid liability for infringement?

Comply with the terms of use of the trademark. (correct)

Create their own version of the trademark.

Use the mark freely in all markets.

Pay a fee to the trademark owner.

Which of the following is NOT a factor in determining whether two trademarks are similar?

Audible similarities.

Visible similarities.

The marketing strategies used. (correct)

Pronunciation similarities.

What is the primary role of the registered user according to trademark licensing?

To use the trademark under specified conditions. Signup and view all the answers

What can be actionable as passing off?

Using a mark that is not registered. Signup and view all the answers

Which statement regarding the confusion of trademarks is accurate?

Confusion depends on similarities, not differences. Signup and view all the answers

What can the Registrar do if the mark is likely to cause deception or confusion?

Cancel or vary the registration of the registered user. Signup and view all the answers

What happens if the proprietor neglects to act on an infringement call within two months?

The registered user may sue in his own name. Signup and view all the answers

What is required from both the proprietor and registered user when applying to use the trademark?

Written application to the Registrar. Signup and view all the answers

Who bears the ultimate responsibility for ensuring that the mark is not exploited by unauthorized users?

The proprietor. Signup and view all the answers

What is the primary aim of the Merchandise Marks Act?

To prevent the forging of trademarks Signup and view all the answers

Which act focuses on misleading advertising related to product quality or safety?

The Trade Malpractices (Miscellaneous Offences) Act Signup and view all the answers

What type of products does the Counterfeit and Fake Drugs and Unwholesome Processed Foods Act primarily target?

Adulterated or fake drugs and unsafe processed foods Signup and view all the answers

What could be a consequence of using deceptive marks on goods?

Endangerment of public health and safety Signup and view all the answers

What common practice do producers of counterfeit products often engage in to mislead the public?

Appending legitimate trademarks to illegal products Signup and view all the answers

What should an applicant do upon receiving a notice of opposition?

Send a counter-statement within one month Signup and view all the answers

What happens if the applicant fails to respond to a notice of opposition?

The application is treated as abandoned Signup and view all the answers

What is the initial validity period of a trademark registration?

Seven years Signup and view all the answers

Under what conditions can trademarks be registered as associated trademarks?

To avoid confusion among similar marks Signup and view all the answers

What may the Registrar do if he finds no likelihood of deception among associated trademarks?

Dissolve the association Signup and view all the answers

What is true regarding the registration of resembling trademarks in a series?

They can be registered by the same proprietor for the same goods Signup and view all the answers

How are associated trademarks treated in terms of assignment and transmission?

They are treated as one unit for assignment Signup and view all the answers

What is the duration for the renewal of registration of a trademark?

Every fourteen years Signup and view all the answers

What is required before submitting a formal application for trademark registration?

A request for preliminary advice on distinctiveness Signup and view all the answers

What happens if the Registrar finds the trademark application lacking in distinctiveness?

The applicant is reimbursed any fees paid Signup and view all the answers

What is the significance of the filing date issued by the Registrar?

It determines the priority of the trademark application Signup and view all the answers

What does the trademark search form include?

Name, specimen, class, and search fee payment Signup and view all the answers

Which of the following is a reason for the Registrar to refuse a trademark application?

The mark conflicts with public policy Signup and view all the answers

What must occur after a trademark has been accepted by the Registrar?

It is published in the Trademarks Journal Signup and view all the answers

What is the time limit for a person to file a written notice of opposition after trademark acceptance?

2 months from publication in the Trademarks Journal Signup and view all the answers

Which of the following options is NOT considered a non-registrable mark?

A mark that is well known internationally Signup and view all the answers

Who has the authority to apply for rectification or correction of the register?

Any person concerned in certain cases Signup and view all the answers

What is the purpose of the statutory notices issued by the Registrar regarding the renewal of a mark?

To notify about the impending expiration of registration Signup and view all the answers

What happens if the renewal fee remains unpaid after the one-month grace period?

The Registrar may remove the mark from the register Signup and view all the answers

Upon registration of a trademark, what right does it grant to the proprietor?

Right to exclude others from using the trademark for commercial purposes Signup and view all the answers

What is the significance of licensing in trademark ownership?

It enables the trademark owner to exploit the trademark outside their country Signup and view all the answers

What action must the Registrar take if a mark registration expires due to non-renewal?

Advertise the mark for non-renewal in the Trade Marks Journal Signup and view all the answers

Can a proprietor apply to restore a mark that has been removed from the register for non-renewal?

Yes, upon payment of a renewal fee plus a restoration fee Signup and view all the answers

What does a trademark protect a proprietor against?

Infringement by others using the trademark without permission Signup and view all the answers

Study Notes

Intellectual Property LPP 406 - Trademark Registration

Right to Apply and Application System:
- Individuals can apply for trademark registration in Part A or Part B of the register, in writing.
- A formal application can be preceded by a request for preliminary advice regarding the distinctiveness of the trademark.
- If the Registrar objects to registration due to a lack of distinctiveness, the applicant must withdraw the application and will receive a refund of fees paid.
Trademark Search:
- A search is conducted before registration to ensure the trademark isn't identical or similar to an existing registered trademark.
- The search form requires details such as the trademark name, specimen, and class of the goods to be searched and includes the appropriate search fee.
- If the search finds no similar marks, it suggests the trademark may be available for registration.
- Successful searches require an application form with clear representations of the mark and prescribed fees submitted to the Registrar.
Complete Application Receipt:
- Upon a complete application receipt, the Registrar issues an official number and filing date.
- The filing date is crucial in cases of competing applications or uses.
- The Registry begins examining the trademark for registrability, considering distinctiveness and public policy.
- The Registrar has the discretion to refuse or accept the trademark.
Refusal or Acceptance:
- The Registrar has a duty to refuse if the trademark is against the law.
- Grounds for refusal are put in writing.
- If the examination is deemed satisfactory, the Registrar issues a notice of acceptance.
- Accepted trademarks are advertised in the Trademarks Journal.
- Opposing parties can submit written notices of opposition within two months after publication, outlining grounds for opposition.
Opposition and Abandonment:
- If a notice of opposition is received, the Registrar informs the applicant.
- The applicant must submit a counter-statement within one month.
- Failure to respond by the applicant leads to abandonment of the matter.
- If no opposition, or if opposition is decided in favor of the applicant, the Registrar registers the trademark in Part A or B.
Registration of Associated Trademarks:
- Trademark owners may seek to register similar or identical trademarks to avoid confusion.
- Separate registration of parts of a trademark is possible if the owner claims exclusive use of those parts (Section 24).
- Similar trademarks in a series can be registered (Section 25).
- The marks must differ in some aspects (e.g., goods in relation to their use/statement; statements of number, place, etc).
- Color differences also can be used for distinguishing trademarks registered as associated trademarks; they can only be assigned as a whole, not separately.
Registration Dissolution:
- If the Registrar is satisfied that no likelihood of deception exists, the association may be dissolved.
- The register is amended accordingly.
Duration and Renewal of Registration:
- Trademark registration duration is indefinite with an initial period of seven years, renewable every fourteen years
- If no renewal is issued, and no response from the owner, the mark may be removed from the register.
- A mark removed from the register will still be deemed on the register for any application regarding the registration of a trademark.
Use and Effect of Non-Use:
- Section 31(2) deals with the use and effect of non-use of a trademark, and its subsequent removal from the register.
- The court or Registrar can remove a registered trademark for non-use if the trademark was registered without intent of use, or not used for a five-year period.
- An appropriate case to demonstrate this principle of non-use is Procter & Gamble Ltd. v. Global Soap & Detergent Industries.
Rectification and Correction of the Register:
- The rectification or correction is done in accordance with sections 38–42, as this includes actions like expunging, varying, striking out or altering entries.
- The Registrar can, on request, correct any error or enter changes (e.g., name, address).
- Applications for rectification can be made by any person or, in specific instances, by the proprietor.
Removal from the Register for Non-Compliance:
- The Registrar can issue statutory notices for impending expiration due to non-payment of renewal fees.
- Two such notices are issued to the proprietor regarding the expiration in a given time frame.
- If the renewal fee is received within one month, the Registrar may renew the mark upon restoration fee payment.
- If the fees aren't paid, the mark is removed from the register.
Effect of Registration:
- Registration grants the trademark owner/proprietor exclusive rights to prevent others from using the mark, specifically, for commercial purposes.
- The owner benefits from protection against infringement.
Other Aspects of Trademarks:
- Trademarks are associated with licenses and assignments.
- Licensing refers to arrangements where a licensor gives permission to a licensee to use a trademark for a set period of time.
- This can include franchise agreements; they are limited arrangements and the right to use a specific mark is granted to a licensee by the licensor.
Trademark Licensing:
- This is the licensing of a trademark for its use.
- Advantages include the potential for passive income and business expansion (and advertisement).
- Disadvantages include potential for loss due to trademark theft and possible threat to the use owner's reputation from mismanaged contracts.
Assignment of Trademarks:
- Trademark assignment involves transferring ownership rights to another party.
- Assignment can cover all goods or specific goods.
- Prior registration ensures that this is admissible in court.
- Common law typically required an assignment with the goodwill of the business to be effective.
Trade Marks and Foreign Investment:
- It encourages foreign investment into a country in accordance to the technology transfer between foreign proprietors to the rights to a local licensee.
- Problems may arise when the company is a manufacturing company with some local businesses and the name and logo are the same; then, the name and logo must be registered to Nigeria.
- Issues might arise if investors quit the venture.
Trade Marks and Transfer of Technology:
- There is not a direct connection between the agreement and the registration
- The agreement is only registered in NOTAP to ensure that the clauses do not cause issues.
Infringement of Trademarks:
- Infringement, also known as counterfeiting, occurs when a person uses a mark identical or very similar to a registered trademark, leading to deception, confusion, or passing off.
Remedies for Infringement:
- When infringement is successful, the court determines suitable remedies, drawing from civil procedures such as injunctions, account of profits, damages, and Anton Piller orders.
- Erroneous entries in the register can be corrected or expunged.
Criminal Action for Infringement:
- Criminal actions deter intentional fraudulent use of marks for profit-related purposes.
Trade Mark Acts:
- Laws like the Merchandise Marks Act prevent the use of identical or confusingly similar trademarks by others.
Infringement of Trademarks - The Issue of Similar Marks (Relevant Considerations):
- The law determines whether the similarity of marks creates confusion.
- Similarity can be in terms of visualization, pronunciation, or audibility of marks.
Case Examples:
- Rodgers and Sons v. Rodgers & Company: Illustrates the principle that no person should misrepresent themselves as an established business.
- Kolex Mercantile Import v. Alliance International Nigeria: Illustrates the issue of maintaining a business name when a partnership is ended or dissolved
Application to General Principles: The case examples illustrate the application of legal principles related to intellectual property, such as the importance of registration, the concept of exclusive rights, and addressing potential infringement issues.

Studying That Suits You

Use AI to generate personalized quizzes and flashcards to suit your learning preferences.

Description

Test your knowledge on trademark law and infringement with this focused quiz. Explore the responsibilities of registered users, factors determining trademark similarity, and legal actions related to trademark infringements. Perfect for students and professionals looking to deepen their understanding of trademark regulations.