Understanding Trademarks and Registration

Introduction

A trade mark is a sign that one may use or have an intention to be used purposely to distinguish goods or services dealt with or to be provided by in line with the trade in accordance to the goods and services dealt with or to be provided by the person. The definition implies that a trademark may include a design, a symbol, or even a word that has the capability of differentiating it from other peoples’ businesses. It identifies ones business in a unique way. Anybody can register a trademark provided the applicant follows the prerequisite procedure of registration.

Care must hover be taken so that the signs prohibited by the regulations are not used for registration. They include representation regarding the seal, arms, and flag of the Australian territorial jurisdiction. Additionally, the signs that the International Union for the Protection of Industrial property prescribes that must be given its due regard. The Olympic Insignia Protection Act of 1987 also joins the list of the agencies that prohibit the use of some signs in their products. It is noteworthy that Clementine can adopt and legally acquire the distinctiveness of her sigh due to continuous use though she must satisfy that with a concrete and visible evidence in form of an averment or declaration that.

After registering the trademark, she acquires the rights that accrue from the said intellectual property. Clementine may decide to register the assignment of the trade mark so that those people that want to use the trade mark can do so legally though her consent. She can also register a license, a move, which is voluntary. The import of all these find their basis on the rationale that intellectual proprietary rights must be protected to avoid infringement by the malicious people. An infringement on her proprietary rights gives her the remedy of suing in the courts of law.

Issues: Whether existing trademarks pose an impediment to the registration of Clementine’s proposed mark

Rule of law: by dint of the law, incase trademarks that materially resemble or have deceptive similarity and have been registered by other persons, the person who has the interest in such registered proprietary interest does not have stop the registered owner of any other trademarks from using the mark. The provision however is the extent to which the first registered owner is authorized to enjoy such right beneath the registration of the trademark so alleged. The law defines deceptively similar as a trademark if it nearly resembles that other trademark that is likely to deceive or cause confusion. The similarity principle may be a ground for refusal to register a trademark.

Application

Since a registered trademark is a personal property, the benefits derived from them may be enforced in the manner in which equities do. The effect of implies that Clementine must comply and adhere to the procedure of claiming such a proprietary right. In case there is opposition to the registration of trademark, the procedure that the person alleging so follows is that the person must file a notice of intention that challenges such a move, which must be done within two months of the advertisement of the trademark. Together, the person opposing it files the grounds and particulars in a statement, which has to be done within a month. One of the grounds for opposing registration of trademark is if the applicant is not the owner of the trademark. Additionally, it may be denied if it is proved that the applicant does not intend to enjoy the propriety rights in Australia or that the applicant does not have the intention of assigning the trademark to a company incorporated in the country.

The registrar may also deny the registration of trademark in respect of goods and provision of services if a given trademark had been registered beforehand; especially if the purported trademark is likely to lead to confusion or deception. Most importantly, the registrar will reject any trademark registration that is made in bad faith. A challenge however persists because discerning bad faith and good faith is not easy.

While doing all these, evidence must be provided due to the legal maxim that he who alleges must prove. The evidence confirming the averments must be provided within three months after the reception of the notice of intention by the registrar. It is at this juncture that the applicant will present the evidence to combat and challenge which is done after three months after receiving evidence in support of the opponent’s objection. After verifying the correctness of the evidence presented in support and against the opposition, the hearing is done upon which the verdict is given. It is upon clearing the hearing of the opposition that the registrar can advertise the registration and the owner thereby provided with the certificate of registration.

The registrar in his own volition will not accept an application for registration of trademark if the goods which the trademark is meant for is substantially identical to a trademark that has been registered by some other person in line with similar goods. Furthermore, the trademarks that may not be represented geographically are not capable of registration.

Conclusion

The name search that the paper has used to confirm the existence of the trade mark results to serious complications. The portal indicates that the trade mark that some business operates its operations using the same feature. As reasoned out in the application, the registrar has unfettered discretion in accepting or rejecting the application for trademark registration as it is evidently manifested by the fact that there is no appeal that can pend out of the final verdict of the registrar. Above all, the name that appears in the proposed trademark betrays the territorial integrity of France as a country. She should have used a different name that does not contain the name of a nationality. The upshot of the above analysis is that Clementine is not likely to succeed in her endeavors her good faith notwithstanding.

Way forward

In as much as the trade mark that Clementine developed has been rejected for not been fit to be registered as a result of the reasons above-mentioned, all is not lost. The first step she can opt for is to amend, delete, or even exclude the portions that manifest the similarity with the already registered trademarks. There is likelihood that only a single feature made the trademark to be congruent with those that other owners did register. Additionally, Clementine can negotiate with the owner of the conflicting trademark. She must not wait to be approached but she can go ahead and enter into agreement. This option is viable only after amendment has proved difficult. Furthermore, she can request the owner of the registered trade to cancel the mark, in his or her own volition or to even assign it her.

Bibliography

Legislation

The Olympic Insignia Protection Act of 1987

The Trade Marks Act 1995, section 26 (1) (b)

Books and journals

• Abbott, F. M., Cottier, T., & Gurry, F. (2019). International intellectual property in an integrated world economy. Wolters Kluwer.
• Dratler Jr, J., & McJohn, S. M. (2018). Intellectual Property Law: Commercial, Creative and Industrial Property. Law Journal Press.
• Halpern, S. W., Seymore, S. B., & Port, K. L. (2015). Fundamentals of US Intellectual Property Law. Copyright, Patent and Trademark. Wolters Kluwer, Law & Business.
• Kovalev, V., Falchenko, O., Vyazovskaya, V., & Semin, A. (2017, September). Practice Of Parallel Importing: Protection Of International Companies'trademarks Rights In Russian Foreign Trade. In CBU International Conference Proceedings (Vol. 5, pp. 237-241).
• Miller, R. L., & Jentz, G. A. (2017). Business law today: The essentials. Cengage learning.
• Morris, P. S. (2016). Trademarks and the Economic Dimensions of Trademark Law in Europe and Beyond. Encyclopedia of Law and Economics, 1-7.
• Nard, C. A., Madison, M. J., & McKenna, M. P. (2017). The law of intellectual property. Wolters Kluwer Law & Business.
• Turner, J. (2015). Intellectual Property and EU Competition Law, 2 u. Oxford University Press, Oxford.
• Van Caenegem, W. (2015). Quality local food products–some aspects of trademarks law and GIs. Enterprise Governance eJournal, 1(1), 6932.
• von Bomhard, V., & Geier, A. (2017). Unregistered trademarks in EU trademark law. Trademark Rep., 107, 677.
• Zhou, H., Sandner, P. G., Martinelli, S. L., & Block, J. H. (2016). Patents, trademarks, and their complementarity in venture capital funding. Technovation, 47, 14-22.

Websites

1. ICLG.com. (2018). Australia: Trade Marks 2018. Retrieved from https://iclg.com/practice-areas/trade-marks-laws-and-regulations/australia accessed on 29.03.2019
2. Simic, V. (2015). My trade mark has been rejected on the basis that it is similar to another mar, what can I do? LEGALVISION. Retrieved [online] from https://legalvision.com.au/my-trade-mark-has-been-rejected-on-the-basis-that-it-is-similar-to-another-mark-what-can-i-do/ accessed on 29.03.2019