Blue Chi’s

The Trade Mark law is divided into two parts, laws regarding the application of a TM and the laws regarding the infringement of a TM, it is very much related to Passing Off as it is the form of protection available for those that do not have a TM.

TMs are regulated by the TM Act 1994 and the TM Directive (?). Upon exhuming a TM, one should go through the initial provisions of the Act (s1-3) to ensure the compliance of the mark with the requirements, which are as follows:

• s1 – The TM must be a mark capable of being graphically represented and capable of being distinguished. Smells and flavours were accepted at some periods, but the ECJ had now moved to the direction of disallowing them. The issue of the distinctive character could be acquired and would need to be proved by the applicant. It is not really clear what is meant by this last requirement.
• s3 – The absolute grounds for refusal are relatively easier to examine that the relative grounds. These include marks devoid of a distinctive character, signs that are exclusively descriptive, signs that are generic, and ones that might offend morals or deceive.
• s6 – Relative grounds for refusal involve rights of other people that might be violated by the granting of this TM. Identical marks on identical goods are clearly prohibited, while identical/similar mark on a similar goods would only infringe if there is a likely confusion in relation to the origin and in this sense confusion includes the likely hood of association with the earlier TM. A TM would also be rejected even when granted for different goods if it can be proved that the new TM would take unfair advantage of the previous TM or would be detrimental somehow (distinctiveness) to the previous TM.

The infringement rules regarding TM are very similar to those of the relative grounds of refusal. The rules are found in section 10 of the Act.