Trade Mark Registration Simplified In Accordance With The Trade Marks Act1994

 

A trade mark is a symbol, word, phrase, design, or combination of these elements that is used to identify and distinguish the goods or services of one person or organisation from those of another. One example of a trademark is the Nike “swoosh” logo. It is a recognisable symbol that represents the Nike brand and is used on its products to identify them as being made by Nike. Unlike other IP rights, a registered trade mark can be valid indefinitely but needs to be renewed every ten years.

Under section 9 (1), a trade mark is a monopoly right because it grants the owner exclusive rights to use the trademark in connection with their goods or services. This means that no one else can use a similar trademark that is likely to cause confusion among consumers about the source or quality of the goods or services being offered. In other words, the owner of a trademark has two exclusive rights over his trade mark:

  1. To use the trade mark to promote and sell his goods or services; and
  2. Prevent others from doing so without their permission.

Section 1(1) of the Trade Mark Act 1994 defines a trade mark as any sign which is capable of:

  1. Determine the subject precisely and clearly; and
  2. Distinguish the goods or services of one undertaking from those of other undertakings.

The definition of a “sign” actually has a low threshold that includes anything that can be “apprehended by the senses”. That would include symbols, words, phrases and designs. In Apple Inc v DPM, the court confirmed that the use of a particular colour in the context of specific goods or services can constitute a trade mark.

The initial registration of any trade mark lasts under s. 42(1), for ten years. Thereafter, it must be renewed every ten years.

Common grounds for refusal of registering a trade mark

  1. a. Section 3(b) of the Trade Marks Act 1994 stated that the mark will not be registered if it lacks distinctive character. For example:

Round numbers like (1000);

A colour or simple colour combination; or

Conventional images, such as shapes of stars or cows for dairy products.

  1. b. Marks that are customary in language or trade practice, such as the custom in confectionary trade to package mint-flavoured products in green colour.
  2. c. if the mark is:
  3. Contrary to the public policy or morality, or deceptive to the public- s.3(3); or
  4. The application was made in bad faith- s.3(6).
  5. d. under s.3(2), a sign must not consist exclusively of a shape or another characteristic that:

Resulting from the nature of the goods themselves;

Necessary to obtain  technical results; or

The shape would give substantial value to the goods.

Trade marks are an essential legal tool that can provide exclusive rights to businesses and individuals to use their brand names, logos, and other identifying marks in connection with their goods and services. If you are a business owner or individual looking to protect your intellectual property and establish a strong brand identity, it is essential to obtain a registered trade mark.

AIO Legal Services can provide guidance and support to help you navigate the trade mark registration process and ensure that your trademark is protected against infringement. We can assist you in conducting a comprehensive trademark search to identify potential conflicts, filing a trademark application and enforcing your trademark rights.

Please contact us for more information about how we can help you protect your trade mark and build a strong brand identity for your business.