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The second step to registering a trade mark: official action reports

By Nazli Naidoo (Associate) Adams & Adams

A trade mark application is examined by the Registrar of the Trade Marks Office. The Registry is currently examining trade mark applications approximately 9 to 12 months after the filing of a trade mark application. On examination, the Registrar will either:

  1. accept the trade mark unconditionally and sign and issue the notice of acceptance for publication in the Official Journal
  1. accept the trade mark, subject to amendments, modifications, conditions or limitations, as he may deem fit, or
  1. provisionally refuse the trade mark.

Once the Registrar issues an official action, the owner of a trade mark is afforded a three month period from the date of issuance of the action within which to respond to the Registrar. If a response is not filed within this period, the owner is required to apply for an extension of the period within which to respond to the action. The term is usually extended for a three month period from the date of expiry of the last term.

The following discussion deals with some of the usual official actions issued by the Registry:

Association

Where a trade mark so resembles another trade mark in the name of the same owner that the use of both trade marks by different persons would be likely to deceive or cause confusion, the Registrar may issue an official action requesting the association of the marks with each other. The association requirement is called for to ensure that ownership of confusingly similar marks vests at all times in the same person.

The main effect of association is that where the owner of associated trade marks wishes to assign one of their trade marks on a future date, he will be required to assign all the associated trade marks together to the same subsequent owner. In other respects, associated trade marks are treated quite independently of each other.

Disclaimer

The Registrar may, as a condition of acceptance, request that a trade mark be endorsed with a disclaimer where a mark includes letters, words, phrases or numerals which are generally required for descriptive use in the trade.

Examples of elements in respect of which the Registry may call for the entry of a disclaimer are:

  • Words which refer to the kind, quality, quantity, intended purpose, value, time of production of goods or rendering of services, or any other characteristics of the goods or services.
  • Words such as ‘good’ or ‘best’ will be required to be disclaimed. If a mark consists exclusively of such words it will not be eligible for registration as a trade mark.
  • Words required in the trade such as the words ‘shirts’ or ‘materials’ in respect of a class of goods in which clothes are filed or the words ‘keyboards’ or ‘screens’ in respect of a class of goods in which electronic devices such as computers are filed.
  • Directions, such as points on a compass e.g. North, South, East, West.
  • Geographical names such as the names of cities, countries or well-known regions may be required to be disclaimed.

In addition, the Registrar also calls for the entry of a disclaimer where a word appears commonly in a class of goods or services (i.e. the word appears three or more times on the register in registered marks in the names of different proprietors).

Where the owner of a trade mark agrees to the entry of a disclaimer against a mark, an endorsement along the following lines will be entered against the mark:

‘Registration of this trade mark shall give no right to the exclusive use of the word ‘SHIRT’, apart from the mark.’

Admission

Another condition that may be imposed by the Registrar is the endorsement of an admission. An admission is usually called for where a word forming part of a trade mark is a misspelling or an abbreviation of a word which is considered to be descriptive, and therefore required for descriptive use by other traders in the same or a related field. The intention of an admission is to acknowledge the descriptive nature of the word in relation to the goods covered by the mark and the right of third parties to use it descriptively.

Examples of elements in respect of which the Registry may call for an admission of the word ‘CHEESE’ are: Cheez, cheas.

Where the owner of a trade mark agrees to the entry of an admission against a mark, an endorsement along the following lines will be entered against the mark:

‘The applicant admits that the registration of this mark shall not debar other persons from the bona fide descriptive use in the ordinary course of trade of the word ‘CHEESE’.’

Undertaking to send a notice of advertisement

The Registrar may request an undertaking to send a notice of advertisement of a trade mark to the owner of an earlier trade mark. This requirement is usually imposed where a trade mark bears some similarities to the later trade mark but where the Registrar believes that the refusal of the later mark would not be totally justified. The notice condition entails the sending of a copy of the advertisement of the later trade mark, as advertised in the Official Journal, to the owner of the earlier trade mark.

The notice should not be construed as an invitation to oppose the trade mark (which is, in any event, the earlier owner’s right) and has the effect simply of alerting the earlier owner to the existence of the later trade mark. If the earlier owner is involved in a distinguishable field, they should not see fit to object to the later trade mark.

Provisional refusal based on the likelihood of confusion with an earlier trade mark

If a later trade mark is identical to an earlier trade mark belonging to a different owner, or so similar thereto that the use of the later mark, in relation to goods or services in respect of which it sought to be registered and which are the same or similar to those goods or services in respect of which the earlier trade mark is registered or proposed to be registered, would be likely to deceive or cause confusion, the Registrar may issue an official action citing the earlier trade mark as an obstacle to the registration of the later trade mark.

Whether or not it is possible to argue against the citation, depends on the facts of each case. Factors which might be considered are:

  • Are the trademarks similar in appearance, sound or meaning?
  • Are the goods or services the same or similar?
  • Are the marks used in the same trade channels?

It is possible for the owner of a trade mark which has been refused to approach the owner of the earlier trade mark for their consent to the use and registration of the later trade mark. If consent is granted by the earlier owner, the Registrar is obliged to waive the citation based on the earlier trade mark and accept the later trade mark.

As mentioned, the official actions discussed above are not exhaustive and there are other conditions that the Registrar has the discretion to impose.

Once the official action has been complied with or the refusal overcome, at the present rate of progress at the Registry, the Registrar takes approximately 4-6 months to sign and issue a notice of acceptance. Following issuance of the notice of acceptance, the mark will be published in the Official Journal. A three month opposition period follows publication during which third parties are given an opportunity to object to the registration of a trade mark. If no objections are lodged, the trade mark will proceed to registration.

Adams & Adams is a proud Partner of the National Small Business Chamber (NSBC).

 

 

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