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GAZETTE
NOVEMBER 1996
jurisdictions, it is expected that such
applications will only be acceptable
upon very strong evidence that the
colour is the principal distinctive
element in the trade mark. For example,
Kodak have been successful in many
jurisdictions in registering Kodak
yellow as a trade mark.
GROUNDS FOR REFUSAL OF
REGISTRATION
There are two different sets of grounds
for refusal set out in section 8 to section
12 of the new Act. Firstly, there are the
absolute grounds for refusal as follows:
Section 8
(a) A sign which does not satisfy the
requirements set out in the
definition of a trade mark in
Section 6.1. of the Act.
(b) A trade mark which is devoid of
any distinctive character.
(c) Trade marks which consist
exclusively of signs or indications
which may serve in trade to
designate the kind, quality,
intended purpose, value,
geographical origin, the time of
production of goods or of
rendering of services, or other
characteristics of goods or
services.
(d) Trade marks which consist
exclusively of signs or indications
which have become customary in
the current language.
The remaining parts of that section
prohibits a sign which is not registered
but consists of a particular shape
resulting from the nature of the goods, a
shape to obtain a technical result, or a
shape which gives substantial value to
the goods.
Further, the standard prohibitions are
included against registrations which
would be contrary to public policy, or
intended to deceive the public, or
prohibit it in the State by any rule of
law, or, finally, an application made in
bad faith.
Section 10
Section 10 sets out the relative grounds
for refusal of registration. These include
a new provision disallowing a trade
mark which because it is either identical
or similar to an earlier trade mark and
would be registered for services
identical or similar to an earlier trade
mark, there exists a likelihood of
confusion, including a likelihood of
association. The new provisions here
are the concept of a similar trade mark
and the concept of a likelihood of
association.
RIGHTS OF PROPRIETOR:
PROTECTION AGAINST
INFRINGEMENT
Sections 13 to 25 of the 1996 Act
which deal with the extension of
rights afforded to a trade mark
proprietor and the ability to enforce
same will have particular relevance for
any litigation practitioner. Again, these
rights have been broadened, principally
with the introduction of the two
concepts already referred to above:
firstly, the extension of a trade mark
proprietor's right to enforce his trade
mark registration in a manner which
would stop the use of a similar trade
mark of similar goods or services for
which the trade mark is registered;
secondly, the concept of likelihood of
association has been included here in
addition to the likelihood of confusion.
The test of likelihood of association
should mean that where a third party
uses a similar design to its brand or
logo, but places a different trade mark
or house mark on that logo, the
registered proprietor holding the
original design may be able to prevent
use. The introduction of these two
principals will obviously increase the
importance of trade mark registrations
and may well allow a trade mark
proprietor to take an infringement
action in circumstances where formerly
he would have had to rely on the
common law of passing off.
GENERAL PROVISIONS
Assignment
Section 28 of the new Act provides that
a trade mark can be assigned with or
without the goodwill associated with it,
and there are no requirements for
publishing a trademark assigned
without goodwill as in the 1963 Act.
There is also, for the first time, a limited
form of assignment allowable in relation
to certain goods or in relation to a
certain locality.
Licensing
Licensing is dealt with expressly for the
first time in the 1996 Act. The former
Act did not deal specifically with
licensing, but only in the terms of
registered user. In the new Act
(Section 32), a licence may be
general or specific, and may apply in
relation to some or all of the goods or in
relation to a particular locality. There is
provision in the Rules implementing
the
Trade Mark Act
to register a
licence with the controller although
it is not obligatory to do so. A
licensee is entitled under Section 34 of
the Act to bring proceedings for
infringement in his own name in
circumstances where the proprietor has
failed to do so.
Registration
There are significant amendments to the
registration procedure within the Act.
Previously, the registry was divided into
two sections; Part A and Part B. This
division has now been abolished and
there is one remaining section the
requirements for which are quite similar
to the old Part B registration: that is, it
only requires a lower standard of
distinctiveness.
The new Act also provides for a new
registration period of ten years which
can be renewable in place of the
previous seven year renewable term
(Section 47).
Famous trade marks
Section 14(3) of the Act provides
protection to a famous trade mark in a
situation where a person uses a trade
mark identical or similar to the famous
trade mark, taking advantage of the
reputation of the trade mark, even in
circumstances where the famous trade
mark may have a reputation in this
State, but would not be registered or
trading here.
Collective trade marks
Section 54 of the Act allows for
members of an association which is
the proprietor of a trade mark to
register it as a "collective mark" to
distinguish the goods or services of
members of the association which is the
proprietor of the mark, from those of
other undertakings.
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