Trademark Basics PDF

Takeaways Trademarks serve as a guarantee of origin and quality. Registering a trademark adds value to a business and confers a property right. Consider budget, conflicting marks, and goods or services when registering a trademark. The STAVILLE test is used to assess mark similarity and likeliho...

Takeaways Trademarks serve as a guarantee of origin and quality. Registering a trademark adds value to a business and confers a property right. Consider budget, conflicting marks, and goods or services when registering a trademark. The STAVILLE test is used to assess mark similarity and likelihood of confusion. Trademark registration can be challenged through invalidation or revocation. Infringement of a trademark requires a mental element of knowledge or belief. Defenses to trademark infringement include using one\'s own name or using a sign descriptively. Andrew Yip (00:01) Welcome to the intellectual property topic of your corporate and commercial practice module. In this video lecture, we will learn about trademarks. Let\'s first consider the basics. The main legislation you should know is the Trademarks Act, as we will refer to key provisions from this Act. Note too that the trademarks rules contain finer details to implement the Act. These are some examples of different types of trademarks such as word marks, device marks and composite marks. Why do we have trademarks? At the heart of it, they serve as a guarantee of origin and therefore quality. There is also some sense that a business deserves protection for its mark in return for the investment in building up public recognition of the mark. You may encounter these symbols when looking at trademarks. The first one indicates that a mark is being used as a trademark to denote trade origin. The second one indicates that a mark is registered, hence the letter R. The Trademarks Act defines trademark. There are several elements to this. First, a trademark must be a sign, and you can read what sign means on this slide. It\'s a broad term. Second, this sign must be capable of being graphically represented. And third, this sign is capable of distinguishing goods or services. It is not compulsory to register a trademark. The main reason for taking this additional step is because a trademark registration adds value to a business. We will see Registration confers a property right, so this itself is valuable. Registration is prima facie evidence of ownership. This is in contrast to a common law action for passing off, where one would have to prove good will. As long as the owner keeps renewing the registration and it is not revoked or invalidated by others, the registered right can last forever. Here are the detailed advantages of owning the property right in a registered trademark. I\'ll leave you to read the slide yourself. We will now look at some practical considerations before one registers a mark. One major consideration is budget because every additional variation of a mark, every additional class of goods or services and every additional jurisdiction costs more. As regards the mark itself, you should also be mindful of earlier conflicting marks which your intended mark may be identical or too similar to. If so, you are likely to find it difficult to register your mark. To minimise conflict with earlier marks, check the trademark registers in your jurisdictions of interest first. Third, you should consider what goods or services to claim in respect of your mark and accordingly which class to apply under. The needs classification is used. More on this later. Further, consider who will be authorised to use your mark once registered. If you envisage licences, make sure you record the licence details. A registered mark is open to relocation for non -use if the owner cannot show that the mark was used with his consent within a consecutive period of five years. More on this later. Also, to consider which markets you want to register your mark in. If budget permits, besides your immediate markets, it would be good to register in advance your mark in markets where you plan to expand in future. Here is an overview of the registration process. After a trademark application is filed, it is examined to ensure that the requirements are met. If things are in order, The application will be published in a public document called the Trademarks Journal so that the public has the opportunity to object to registration if there are reasons to do so. If there is no opposition or the opposition is decided in the applicant\'s favour, the mark is registered. More on opposition here. As the previous slide mentioned, anyone can object to the registration of the trademark through an opposition, giving reasons. The reasons, or the grounds, we say, overlap with the registrability criteria used when the trademark application is examined before publication. There are absolute and relative grounds for refusal. which we will look at in more detail shortly. We now consider the highly important issue of grounds of objection. There are two categories of grounds. One, absolute grounds and two, relative grounds. Absolute grounds of objection are based on the mark itself. In contrast, relative grounds of objection depend on other external factors such as earlier conflicting marks. We will first look at absolute grounds. In this course, we will focus on sections 7.1 and 2 for the absolute grounds. On this slide, we see that a mark which is devoid of any distinctive character under section 7.1b or is descriptive under section 7 shall not be registered. However, there is a way to overcome this objection under section 7.2. The applicant can give evidence to show that before the date of application, the mark has acquired a distinctive character as a result of the use made of The case of Hans on this slide identifies three types of mugs. The first type are those which are inherently highly distinctive. An example of such a mug is an invented mug such as Nutella. Another example are words which have little or no bearing in relation to the goods or services which they are sought to be registered for. One example is Apple for computers. The second type of marks are those which only possess a low level of distinctive character. An example of such a mark is a misspelled descriptive mark. The third type of marks are those which only became distinctive through extensive use. So for example, the 7.11 mark, which was derived from the opening hours from 7am to 11pm, was registered only as a result of use. Each absolute ground operates independently. So for example, the non -distinctiveness ground under section 7.1b and the descriptiveness ground under section 7.1c are distinct grounds. The failure to overcome any one ground is sufficient to deny registration. However, the grounds may overlap. Section 7.1b, the non -distinctiveness ground, is a catch -all objection. Descriptive marks are a subset of non -distinctive marks. However, the converse is not necessarily true, as not all non -distinctive marks are descriptive marks. In the love case, see how sections 7.1b and were applied by the High Court in relation to the word mark love. It was both descriptive and non -distinctive. Let\'s take a look at a marvelous case for more on Section 7.1c. In essence, this provision protects the public interest to ensure that descriptive terms may be freely used by all. Here is more elaboration on the principles to apply when Section 7.1c is in review. Have a look yourself. In conclusion, as regards the absolute grounds of registrability, we are looking at the qualities of the mark itself. If a mark is fenceful, invented, with no meaning in the common language, for example, codec, it is highly distinctive and should be found registrable. If it is an arbitrary mark with a known meaning, applied to unexpected goods or services such as Apple for computers, it is also distinctive enough and registrable. If it is suggestive like Jaguar for cars suggesting speed, because the descriptive link is not direct, the mark is still registrable. However, If the mark is one like fresh and crunchy for apples, it describes the characteristics of the goods and would not be registrable. One step further, if the mark is apple and the goods are apples, clearly the mark should not be registrable as the term apple should be freely used by all for apples. We will now look at the important topic of relative grounds of objection. Most of the time, this is a situation where there are earlier marks considered to be similar to the application mark. Recall what we said earlier about two categories of grounds. One, absolute grounds, which are based on the mark itself. Two, relative grounds, which depend on other external factors. such as earlier conflicting marks. Our starting point is what an earlier trademark is. Section 2.1 defines this and I will leave you to read the provision here. Focus on part A and the last part that is not about well -known trademarks. You will see that the application date is very important in determining whether a trademark is an earlier trademark. Section 8 -2B is the most commonly raised ground. There are three requirements for this ground and they are 1. Similar marks 2. Identical or similar goods or services 3. The likelihood of confusion on the part of the public. We will look at each in turn. Staywell and Starwood is a seminal case on the application of 8 So do read the case in full. The Court of Appeal introduced the three -step test here, which is a different approach from the global appreciation test in the UK and EU. These are the three steps of the STAVILLE test. The first step pertains to mark similarity. The second pertains to goods or services similarity or identity. and the third step pertains to likelihood of confusion. Mark similarity and goods or services similarity or identity are threshold requirements. If the marks are not similar, there is no need to proceed to steps 2 or 3. Similarly, if the marks are similar but the goods are neither identical nor similar, then there is no need to assess the likelihood of confusion in step 3. Let\'s go deeper into the STAVILLE test. In step 1, there is a need to identify the earlier mark. You may recall the statutory definition of earlier trademark in an earlier slide. In order for a registered mark or application mark to qualify as an earlier mark, Its application date must be earlier than that of the subject application. One then compares the earlier mark and the subject mark without consideration of any external matter. Assess if there is any similarity visually, orally and conceptually. Inherent technical distinctiveness is taken into account. A mark which has greater technical distinctiveness enjoys a high threshold before a competing sign is considered dissimilar. For example, the mark Nutella is an invented word and has high technical distinctiveness. The competing mark Nutello is therefore considered similar more readily. Bear in mind that a mark should be assessed as the whole. Look at the overall impression of the marks. bearing in mind their distinctive and dominant components. At the end of the day, similarity is a matter of impression and not a mechanistic exercise. The question is, are the marks more similar than dissimilar? From Foo\'s perspective, is the assessment of mark similarity made? One has to take the viewpoint of the average consumer of the goods who would exercise some care and a measure of good sense, and is not an unthinking person in a hurry. The human element of imperfect recollection must also be factored in, such that the competing marks are not compared side by side and examined in detail, because this does not usually happen in real life. Instead, the keyword, again, is impression, having regard to the essential or dominant features. Let\'s dive into visual similarity in comparing marks. Here are some principles derived from case law to help you. If the competing marks are word marks, you can consider these four points. If composite marks are involved, that is, the marks contain both words and graphical elements, consider these points in the lower part of the slide. On oral similarity, how the marks sound, there are two approaches. Under the qualitative approach, one compares the dominant and distinctive oral components of the marks. Under the quantitative approach, one looks at whether the competing marks have more syllables in common than not. For conceptual similarity, we look at the ideas that lie behind and inform the understanding of the marks. This is to be done appreciating the mark as a whole. For example, the mark -sand ridges as a whole or park ridges as a whole would bear different concepts from just one element ridges. Here is a quick summary of how to assess mark similarity in step 1 of the STA -well test. I\'ll leave you to read this on your Under step 2, we look at whether the goods or services are identical or at least similar. The starting point is to identify the specifications of the respective marks. This is the list of goods or services claimed by the application or registration. We will delve into the principles of comparing goods and services in the following slides. First, We ask whether the goods or services are identical. For example, the earlier mark claimed clothing and footwear and the opposed mark also claimed clothing and footwear. Therefore, the goods are identical. If the goods or services are not identical, we go on to assess whether they are at least similar. Class numbers are a good place to start assessing whether goods and services are similar. There are 45 classes under the NEES classification. Commonly claimed classes include Class 25, which includes clothing, footwear and headgear, and Class 36 for financial, banking, insurance and real estate services. The main point is that goods and services under the same class might be similar, but this is only a starting indication and not determinative. One still has to consider the actual items of goods and services claimed by the specifications. This takes us to the next point, which is to assess whether the goods or services are similar using the British sugar factors. These are quite common sensical and look at the uses of the goods, the users of the goods, the physical nature of the goods and the trade channels through which the goods reach the market. For self -serve consumer items, one considers whether they are likely to be found on the same or different shelves in the shops. For example, rice and toothpaste are typically found on different shelves in different sections of the supermarket. Finally, one can also consider the extent to which the goods are competitive. The higher the extent, the more likely the goods are similar. If one concludes that the goods or services are identical or similar, then we move on to step 3 of the STAWELL test, where we assess the likelihood of confusion. We will go deeper in the following slides. The relevant confusion should be that which arises from the similarity of marks and the identity or similarity of goods and services. The fact that the marks and goods are similar does not always mean that the projecting public would be confused as result. In other words, there is a difference between being similar and being confusingly similar. Under step 3, there are permissible and impermissible extraneous factors. Extraneous factors which shed light on how the similarity of mugs and goods are likely to affect the consumer\'s perception of the source of the goods are permissible. These factors are intrinsic to the nature of the goods or affect the impact that the mug similarity or boot similarity has on the consumer. On the other hand, differences created by a trader, such as differences in price and packaging, are impermissible factors. This slide shows a non -exhaustive list of permissible extraneous factors relating to the impact of mass similarity on consumer perception. So for example, a high degree of mass similarity will turn towards a higher likelihood of confusion as compared to a marginal degree of mass similarity. And here are examples of permissible extraneous factors relating to the impact of goods similarity. For instance, if the goods are of a nature that requires technical assistance in selection, such as specialized equipment or machinery, a greater degree of care would tilt the balance away from a likelihood of confusion. Let\'s now look at registration and renewal. A mark is registered for 10 years as from the date of the application for registration. So in the example here, if a trademark application is found on 2nd February 2024 and it gets registered, the registration will last for 10 years from 2nd February 2024. That is 2nd February What happens after the end of the 10 years? Well, the registration can be renewed. It is a matter of the cost of renewal versus the benefit of renewal. If the mark is no longer of interest, one can simply allow the registration to expire without renewal. But if you have licensed the mark to a Make sure you renew the registration if it expires during the term of the license or you might be in breach of the license terms. We now look at exclusive rights under a registered trademark. Upon registration, the proprietor has the exclusive right to use the trademark and to authorize others to use the trademark. The exclusive rights are subject to any disclaimer or limitation as set out in Section 30. It bears saying that a registered trademark is personal property. Therefore, it can be dealt with as property. For example, it can be assigned or licensed. Here are the statutory requirements. Have a It is important to record these assignments and licenses with the Registry of Trademarks. Otherwise, under Section 39.3, the transaction is ineffective against the person who acquires a conflicting interest in the trademark in ignorance of the transaction. An assignee is also not entitled to monetary remedies in respect of infringement. occurring after the transaction date and before the date of the application to record the transaction. We will now look at some post -registration processes. You may recall in an earlier slide that when an application is filed to register a trademark, it might encounter opposition. That is pre -registration. Post -registration, a registered trademark may still be challenged. The two most common forms of such challenges are invalidation and revocation. These actions can be brought in the High Court or before the Registrar of Trademarks. Why, you may ask, would someone challenge a registered trademark? There could be a few reasons. One could be that the challenged mark was cited in objection under Section 8 against the Challenger\'s Later Trademark Application. I\'ll leave you to read the rest. Invalidation is based on section 23 read with sections 7 and 8. The challenge is based on grounds that disqualify a mark from being registrable. So what you learned earlier on objections like descriptiveness, non -distinctiveness and confusing similarity under stay well are relevant in the context of an invalidation action too. The effect of a successful action is that the registration of the mark is deemed never to have been made, but this does not affect transactions passed and closed. Note that a successful invalidation can be in full, that is in respect of the entire specification, or partial, only in respect of the relevant part of the specification. Next, revocation. Refocus on Section 22.1a and b, which are grounds of non -use. If a mark has not been used for a consecutive period of five years, it can be revoked. The burden of proof lies on the trademark owner rather than the challenger, because it is easier for the owner to show use of the mark if he has indeed used as compared to the challenger showing the absence of use. As with invalidation, revocation can be in respect of the whole specification or partially in respect of only a part of the specification. If there was indeed a five -year period of non -use, but the owner then resumed use of the mark more than three months before the application for revocation, his registration will not be revoked. But if such use takes place within three months before the application for revocation, it will be discounted unless preparations for it began before the owner was aware that the application for revocation might be filed. Also, take note that the use to be proven goes beyond the exact form of the registered mark. It includes use in a form differing in elements which do not alter the distinctive character of the mark. Here is a revocation example involving dates. The first bullet point shows the five -year period in which the mark was allegedly not used. The challenger files an application for revocation on 5th May 2024. The owner did not use the mark within the 5 -year period but resumed use on 4th April 2024. And the preparations for use only started after the owner was aware that the application for revocation might be made. Applying Section 22 for such use is disregarded. The revocation succeeds. But what is the effective date? Note that the effective date for invalidation and revocation actions differ. Here, applying Section 22.7b, the earliest date that the grounds for revocation existed is 1st January 2024. Let us now turn to infringement. The relevant provision is Section 27 of the Trademarks Act. As you read this, you will realise that it is quite similar to Section 8. The provision also sets out examples of use when looking at one of the requisite elements of infringement. Have a read yourself. Section 27 -5 qualifies that for certain types of use, there is a mental element before the use can be regarded as infringing use. The defendant must know or have reason to believe that the trademark owner or licensee did not consent. Without this mental element, the reach of the infringement provision would be too broad. The analysis of Section 27 is highly intertwined with that of Section 8 in the Staywell case. The three -step Staywell test applies to infringement as well. However, there is one critical difference in how the test should be applied as between Section 8 and Section 27. See paragraphs 56 to 62 of the Staywell decision. Unlike in an opposition, in an infringement action, the court compares the full range of notional fair uses of the claimant\'s mark against the actual use of the defendant\'s sign. We will now look at defenses. For this, return to Section 28 of the Trademarks Act. Use covered by Defenses includes situations where you use your own name or you use a sign descriptively, or if your use was earlier than the claimant\'s date of registration of the mark or the claimant\'s first use. Here are other categories of use which fall under the recognised defences, such as comparative advertising and news reporting. Finally, we end with a quick summary of the main defences. I hope this lecture has given you a good overview and introduction to trademarks. B24 IPL - Trademarks - TM Basics - Trade Mark Basics - Symbols - what is a trademark? - Benefits of registration - **[Practical considerations pre-registration]** - Registration process - **[Opposition process]** - Criteria: **[Absolute Grounds]** for Refusal - s7(1)(b) devoid of distinctive character s7(1)(c) designate objection 1. 2. 3. 4. - Han's (F & B) Pte Ltd v Gusttimo World Pte Ltd \[2015\] 2 SLR 825 ("Hans") - Love & Co Pte Ltd v The Carat Club Pte Ltd \[2009\] 1 SLR(R) 561 ("Love") - In the Matter of a Trade Mark Application by Marvelous AQL Inc \[2017\] SGIPOS 3 ("Marvelous") - s7(2) Acquired distinctive character as a result of use - Criteria: **[Relative Grounds]** for Refusal - ▪ Relative grounds vs absolute grounds ▪ What is an earlier trade mark - ▪ Section 2(1) - earlier trademark by priority by date of registration - ▪ Section 8 - ▪ Section 8(2) - ▪ Section 8(2)(b) (most common objection) - Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal \[2014\] 1 SLR 911 ("Staywell") - three-stage test - Stage 1 mark-for-mark comparison. **[Are the marks more similar than dissimilar?]** If the marks are not similar, then there is no need to evaluate steps 2 and 3 - As a **[whole]**, but with varying **[threshold]** for technical distinctiveness - Whose perspective? - **[impression]** of the **[avg consumer]** - Visual similarity - 4 points - Oral similarity - 2 approaches - Conceptual similarity - Stage 2 : Compare the goods and services - British Sugar factors - Stage 3: Assess the likelihood of confusion - impermissible/ permissible factors - permissible factors - impermissible factors - non-exhaustive factors - Registration and Renewal of Trade Marks - Registration - Renewal