Frequently Asked Questions (FAQs) (click on a subject
and sub-menu)
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1) Patents |
Welcome to our FAQ section covering various aspects of Intellectual Property. These notes serve only as a general guide and are not designed to address any specific issues that you may be concerned with. In consequence, Baron & Warren cannot accept any liability or responsibility for any decisions or actions taken on the basis of these notes. However, we would be happy to discuss any particular matters of interest with you. |
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You are welcome at any time to print these pages and read them at your convenience. However, reproduction of these notes, other than for personal and private use, is strictly prohibited under Copyright law. |
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2) Trade Marks |
Creation |
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q What is the function of a Trade Mark? q Trade Marks act as a badge of origin to identify the goods and/or services with a particular manufacturer or trader. q What constitutes a Trade Mark? q ‘words’, ‘logos’, ‘slogans’, ‘packaging’, ‘shape’ and ‘colour’ so long as:-
q What types of Trade Marks cannot be registered? q Non-distinctive Trade Marks:- q Signs which are essentially generic, laudatory or simply lack any ‘spark’ (e.g. single / double letters, common words such as PLUS or DIRECT, or combinations thereof, or banal advertising slogans). q Earlier Trade Marks; Registered or Applied for: q Trade Marks which are identical with or similar to a Trade Mark with an earlier filing date and covering the same or similar goods and/or services. q How is a registered Trade Mark chosen? q Find a mark that is capable of registration and not used or registered by others. As a guide, ensure that the chosen mark is not one of the following:-
q Why search? q It is essential to identify obstacles to use and/or registration to avoid possible litigation or insurmountable refusal of an application. q To a limited extent, it is sometimes possible to identify possible problems of passing-off. q What is the significance of a Trade Mark becoming distinctive? q If a Trade Mark has been put to use, the public may come to recognise that it distinguishes the goods and/or services of that trader from those of another. In consequence, the mark will acquire the distinctive character to secure acceptance which otherwise would not be forthcoming.
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q How is protection secured? q In the main, protection is obtained through a registration process administered by an official government department in virtually all jurisdictions. q Why register? q Registering a Trade Mark gives the user the exclusive right to:-
q How long is a registered Trade Mark protected? q Indefinitely, provided a renewal fee is paid, generally every 10 years. q How does registered and unregistered Trade Mark protection differ? q When taking legal action against others, registered Trade Mark users need only base their case on the registration, whereas users of unregistered Trade Marks must rely exclusively on ‘passing off’ for protection (see enforcement). q How is protection obtained abroad? q Trade Marks are territorial in nature and, therefore, UK registrations do not give protection abroad. Protection is secured by filing a separate application in countries of interest or via a single application procedure as follows:
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q What must be considered prior to filing an application? q The scope of registration; that is; the goods and/or services for which the Trade Mark will be registered. The scope of the registration cannot be widened after registration so all the goods and/or services for which the Trade Mark is intended to be registered should be stated from the outset. q What are the requirements for filing an application? q the applicant’s details; q a graphical representation of mark including colour, shape, etc; and q a statement of the goods and/or services to be claimed. q How are the goods and services classified? q There are currently 34 classes of goods and 11 classes of services. q What does claiming priority mean and what is its advantage? q Up to 6 months after first filing an application, further applications can be filed in other countries using the date of the first application as the bench mark when conflict arises - the so called Priority Application.
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q What is involved in the examination process? q The UK Trade Marks Registry will carry out the following:-
q The CTM Office will carry out the following:-
q What happens if objections are raised? q For UK applications, arguments can be submitted in writing and/or at an oral hearing before the Trade Mark Registry following which the application is either accepted or rejected. q For CTM applications, arguments can be submitted in writing following which the application is either accepted or rejected. q What happens if the application is rejected? q For UK applications, the applicant may appeal to the ‘Appointed Person’ or the Courts with no further appeal from the Appointed Person’s Decision. q For CTM applications, there is an avenue of appeal, firstly to the CTM Appeal Boards, and thereafter to the Court of First Instance (CFI) in Luxembourg, ultimately ending with the European Court of Justice (ECJ).
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q What happens once the Trade Mark is accepted? q The Trade Mark is published in the official Trade Mark journal following which a 3 month opposition period commences. q Why is the Trade Mark published upon acceptance? q Publication allows third parties to inspect the Trade Mark and either oppose registration or make informal observations in writing. q What happens if the Trade Mark is opposed by a third party? q For UK Applications, within three months of the official advertisement, the opposer files a notice and grounds of opposition. Subject to the possibility of extending a cooling off period if the parties are negotiating, in reply, the applicant rebuts the opponent’s claims or withdraws the application. At this stage, the Registrar issues a Preliminary Indication (opinion) if the opposition is based on prior registered rights. Assuming the parties elect to continue the proceedings, thereafter, within set time limits, the parties are invited to file evidence in support of their positions - the opponent must file evidence to maintain the opposition. If appropriate, the opponent is able to submit evidence in reply. Often a final oral hearing is held before the Registrar to argue the case following which an official decision is issued. q For CTM Applications, within three months of the official advertisement, the opposer files a notice and grounds of opposition. The Office then sets dates for cooling off and the argument / evidential rounds for both parties. The cooling off period may be extended for a maximum of 24 months from the original notification. If appropriate, the opponent is able to submit evidence in reply. The entire proceedings are conducted in writing. A decision will be issued on the papers on file. q What are the options if the Opposition fails? q For UK applications, the losing party may appeal to the ‘Appointed Person’ or the Courts with no further appeal from the Appointed Person’s Decision. q For CTM applications, the losing party has the same avenues of appeal available as set out above for examinations.
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q When does the application finally proceed to registration? q Once all outstanding objections and obstacles have been overcome; or q if there is an opposition, when the opposition is withdrawn or decided in favour of the applicant. q What is involved at the Registration stage? q A registration certificate is issued, but in the case of CTM applications an official registration fee is payable; q the mark is entered on the Register from a given date; q the Trade Mark is placed on the Register for a period of 10 years from the date of filing of the application. This applies to both UK and CTM registrations.
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q What must be done to keep the Trade Mark in force? q A renewal fee must be paid, generally every ten years; q the registered Trade Mark must be put to genuine use in respect of all the goods and/or services for which it is registered. q What is the effect of not using the Trade Mark after registration? q If the registered Trade Mark is not used for more than 5 years from registration, or for any subsequent five year periods, there is a risk that it may be removed from the Trade Mark Register on application by a third party on grounds of non-use, or where there are no goods reasons for non-use q Are there any other potential hazards? q Allowing a mark to fall into generic use by the relevant trade allows a third party to seek cancellation on the basis that the mark is no longer the badge of origin of the trader. q Any instances of generic use by the trade should be drawn to its attention with a request to cease such use. q What if there has been a change of ownership? q Failure to record an assignment (transfer of property) will prevent litigation from being commenced until recordal is completed.
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q How is a Trade Mark infringed? q As a rule, a person infringes a registered Trade Mark if he uses, in the course of trade, a sign which is:-
q What is the advantage of infringement proceedings over passing off proceedings? q In passing off proceedings, a Trade Mark owner must demonstrate that it has a goodwill or repute in the mark; there is deception in the mind of the public; and, as a result of the latter, damage has occurred to its business. Passing off proceedings, as compared to infringement proceedings, are more complex, more costly, and with a less certain outcome. q Why is Trade Mark watching important? q The onus is now on the owner effectively to ‘police’ his registration. A watching service identifies conflicting marks accepted by national offices. This may be applied regionally or worldwide. Failure to take action against identified marks may result in a very serious dilution of owners rights |
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