Trademark Registration Process & Considerations

This assignment explores the intricacies of trademark registration. It highlights the critical role of accurate product and service classification in ensuring a successful application. The document stresses that misclassifying goods or services can render the trademark worthless. Additionally, it emphasizes the need to comply with all relevant legal requirements and avoid any specifications mentioned as grounds for refusal during the registration process. Understanding these principles is crucial for businesses seeking to protect their intellectual property.

Intellectual Property
Law CW 1

TABLE OF CONTENTS
INTRODUCTION...........................................................................................................................1
A) AN ADVERTISING “JINGLE” ASSOCIATED BY THE PUBLIC WITH THE LAPTOP
PRODUCED BY TABLE................................................................................................................1
Basic Registrability................................................................................................................1
Absolute grounds for refusal..................................................................................................3
Nice classification of goods for each trade mark...................................................................3
B) REGISTRATION OF TRADEMARK FOR A BOTTLE OF PERFUME IN SHAPE OF
MALE TORSO: .............................................................................................................................4
A. Basic registration ability....................................................................................................4
B. Refusal of trademark- Absolute grounds...........................................................................4
C. Refusal of registration of trademark- Relative grounds.....................................................5
D. Nice classification.............................................................................................................6
CONCLUSION................................................................................................................................6
REFERENCES...............................................................................................................................7

INTRODUCTION
Intellectual property law is applicable on the intangible properties which can be protected
under the federal and state law, involving the copyrights work, concepts, ideas and discoveries
along with inventions (Bently and Sherman, 2014). The term intellectual property is mainly
associated with the intangible property such as trade-mark, brand name, logo and patents, etc.
Present report is based on analysis of intellectual property relating registration of an advertising
“Jingle” linked by public for a laptop produced by brand “Tablex”. Two different case scenarios
have been discussed in this report analysing the sound track trade mark for tables and shape it for
booties. Comprehensive discussion on the registrability of any trade mark is made to provide
clear understanding of legal provisions. In order to make the assessment more reliable, brief
discussion about the absolute along with relative grounds of proposal will be made.
A) AN ADVERTISING “JINGLE” ASSOCIATED BY THE PUBLIC WITH
THE LAPTOP PRODUCED BY TABLE
Trade mark is analysed as a name or symbol which a brand utilizes on its products and it
cannot be legally adopted by any another brand. According to trade mark act 1994, “Trade-
mark” is analysed as any sign which is capable for graphical representation and differentiating
goods or services of one company from that of another (Waelde and et.al, 2013). It can be consist
of words, designs, tune, rhyme, numerals, shape, letters, jingle and packaging of products. In this
context, trademark is useful for the protection of Jingle of Tablex brand to be copied by other
company. This act has provided rights to use which is owned by company who have registered
trademark.
Basic Registrability
A person or company can make registration of its trade mark through the Intellectual
property office. It is the responsibility of intellectual property office to check whether rights,
trade mark, symbol and Jingle is appropriate for getting trade mark as specified law (DAILY,
KIEFF and WILMARTH JR, 2014). However, it is necessary that rights are transferred to
owner of trademark which is responsible for unauthorized use of trademark on the products, logo
and Jingle.
The law of trade mark in UK is same or limited for every business enterprise or entrepreneur.
Further, any firm whether it is small, micro, sole proprietorship, corporate, joint venture,
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partnership or any other incorporated entrepreneur has the right to get its logo, Jingle, words,
slogan, etc. registered. In the UK, Trade Mark Act 1994 complies with the registration of
trademark and protection of brand name from misuse. Moreover, the validity of any trademark in
this act is 10 years from the date of registration. In case of continuation, company or individuals
are able to re-register their brand logo or jingle under TMA 1994. In this scenario, an appropriate
registration process has been followed by Tablex for getting their Jingle for Laptop registered
under the Trade mark Act 1994. Study provided an understanding that process of registration
takes almost three to four months for completion (Hart, Clark and Fazzani, 2013). However,
duration can also be increased in case when the objections regarding trademark gets elevated.
In addition to this, a sound track or rhyme can also be registered under trademark act
1994 in which sound must be utilized to differentiate a particular brand or product in market.
Jingle is mainly utilized by Tablex for promotion of their laptop in market among target
customers and also to differentiate their products from other competitors in market.
A trademark must not be similar so it will get registered under provision of Trade mark
act 1994. Below given is that process which needs to be followed by Tablex prior to make an
application for its “Jingle” such as:
Stage 1: It is essential to analyse whether company has made any previous attachments or not
before applying for registration of trade mark or Jingle.
Stage 2: Tablex needs to identify and analyse the data base of its trade-mark before applying for
registration in Intellectual property office (Kur, Planck and Dreier, 2013).
Stage 3: Taking permission from the owner of establishment and members of company.
Stage 4: Letter of consent is issued by the employer or owner to Tablex.
Stage 5: Tablex needs to use trade mark attorney to provide support to authorities in the process
of identification and registration.
However, company will receive Gazette notification or certificate from authority after
getting approval from IP office. For getting Jingle registered, it is essential for company to have
a positive public image otherwise, it will not get approval and stated application will be
cancelled. Apart from this, authority can also cancel application in case of any similarity between
trademarks or symbol. However, it is for Tablex that their Jingle must be new and not similar
with any other existing Jingle in market.
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Absolute grounds for refusal
There are various important grounds of refusal based on application for registration of
trademark by applicants that must be cancelled. These important grounds are required to be
analysed by organisation prior to registration. Below given are some grounds issued under
intellectual property act 1994 such as:
 Inability of Tablex to differentiate its Jingle for Laptop with other brand.
 Jingle consists of common words and practices followed in trade.
 Further, Jingle that contains some inappropriate words and affects cultural values of
people are not acceptable by authorities.
 It does not carry distinctive characteristics (Davis, 2012).
 It must not affect any competitor brand image and does not contain offensive example.
 Must not contain misleading promises and wrong information. For example: organisation
sells laptops and jingle determines it Mobile phone.
 It should be realistic and must not be similar with the national anthem of any country.
Further, Tablex needs to consider these grounds before applying for registration so that it
will not face any problem or restriction from public or the intellectual property office (Bettig,
2018). It should provide trademark attorney to the IP office in order to provide support in
identification and authentication of applications.
Nice classification of goods for each trade mark.
As per the analysis, registration of sound track usually falls in the category of non
conventional trade mark legislation (May, 2015). Other in this category also involves hologram,
motion, shape and sound track. Nice classification has emerged after introduction of Nice
Agreement in 1957. It is also helpful in providing appropriate classification products and
services for the purpose of registration of trade mark. Further, the list under this classification
has been analysed and updated for the purpose of registration of trade mark. Nice agreement is
introduced for the members countries of Paris convention for the protection of intellectual
property. It helps in making filing process as same as adopted in all countries. Moreover,
products and service under nice classification has been combined with explanatory notes
providing detailed description of any kind of products and service that involving some of their
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respective classes. Sound track has been involved in the class 9 explanatory notes of nice
classification.
B) REGISTRATION OF TRADEMARK FOR A BOTTLE OF PERFUME
IN SHAPE OF MALE TORSO:
Booties brand has made an application for registration of packaging of Macho balm a
male fragrance in shape of male torso. It is discovered that the packaging is resembles to the
bottle of fragrance Jean Paul Gaultoer by Le Beau Mael. The effects and consequences of the
application made for registration of trade mark is as under:
A. Basic registration ability
For making an application for registration of trade mark firstly it must be check that the
trademark is not been offensive, misleading, a 3 dimensional shape associated with trademark,
too common and non-distinctive, look to similar to state symbols like flags or hallmarks
(Tushnet, 2016). It must be checked that does a trademark applied for registration already
registered. There are certain procedures to be followed for this situation.
The given case have a similar situation, for this following procedure shall be followed:
the brand Booties shall ask Le Beau Mael for permission to register the trademark of the bottle.
It must also receive a written approval in form of 'Letter of consent'. It shall be attached with
application.
On identification of an earlier registered trade mark which is same or similar to your
product. The department of intellectual property rights may
 Remove the requirement of notification to the earlier domestic UK trademarks by an
arrangement of letter of consent from the owner earlier trade mark.
 The letter of consent will only be accepted by department if it is on letter headed paper of
owner of earlier mark, states the application number, agrees on registration of trademark
for which application is made, signed be responsible person with stating the position that
person holds in the company.
When all the conditions are satisfied then only application for registration of trademark
will be accepted.
B. Refusal of trademark- Absolute grounds
An application made by the Booties can be on following grounds, that is
1. A trademark which consists of:
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 Arms of Royal Family
 Royal Crown 's representation
 a representation of her Majesty or any member of the Royal family,
 words, letters or devises which leads other person to think that the applicant has an
authorisation to do so.
2. A trademark which consists or referents:
 united kingdom's national flag
 England, Wales, Scotland, Northern Ireland- there flages
3. A trademark shall not be registered in specified cases:
 national emblems, &c. of convention countries- section 57
 emblems &c. of certain international organisation Section 58
4. Prohibitions may be made in relation to trademarks which contains or consists of:
 the arms granted to a person by virtue of the Crown.
 badge which have near resemblance of arms or which can be mistaken for actual
arms.
5. A trademark shall not be registered, which consist a representation of Olympic Symbols,
unless
 a person has been appointed under the act to make an application for or
 a person or person on his behalf has been given consent
the trademark of Booties shall not contain any of the above mentioned specification (Kur,
2015). otherwise, the application is liable for rejection.
C. Refusal of registration of trademark- Relative grounds
1. A trademark which is identical with earlier registered trademark product or service shall not be
registered.
2. A trademark which is identical or similar to a trademark already registered shall not be
registered. (Deorsola and et.al., 2015). It is to be registered with similar or identical goods or
service for which earlier trademark is protected.
3 a trademark must not bet registered when it has an identical representation with an earlier
registered mark. A trademark which is being registered for taking unfair advantages of being
identical or similar.
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4. A trademark shall not be registered if its use is can be held as prevention, by a law for time
being in force, or earlier rights.
5. A registration can not be withheld when the holder of a trademark already registered has
given an approval for registration of trademark.
The application made by Booties shall be accompanied with letter of consent from- and
assure the department that it will not take any unfair trade advantage from similar trademark.
Nice Classifications of goods for trade marks: a system of classification is used to for
identifying classes of trademark and in this product and services with similarity are grouped
together. There are 45 different classes. It is done be an intellectual property officer.
D. Nice classification
A list which contains the class of product and services is done on basis of pre approved
terms. (Pohlmann, 2015). The product and services are included in the different classes. All the
classes heading explanation about what is covered in that particular class.
1. The class in which goods are listed is from 1-34.
2. services are covered in classes 35-45.
If there is difficulty in choosing the class for a product or service a classification search
tool Tmclass can be used (Classification of trademarks, 2018). This helps in searching and
classification of the goods or services. It is important to choose a correct class or classes for the
product and pre approved terms within each class for bottle of perfume packaging. A registered
trademark lasts for 10 years, but if its not used for 5 years the registration can be revoked. It is
essential to select a right class or classes for a trademark. A wrong class can make the
trademarks worthless.
CONCLUSION
From the above report it can be concluded that for registration of a trademark firstly an
appropriate classification for product and service is essential. A wrong identification of class for
product or service can make the registration worthless. The application shall be made with a
letter of consent from owner of earlier trademark, when already a tidemark exists for which
application is being made. the trademark for which registration is sought shall not fall under any
specification mentioned as absolute and relative grounds for refusal of registration of trademark.
So for registration of a trade mark it is essential to identify a proper class, knowledge of grounds
of refusal. Both the company shall collet relevant information before registration of trademark.
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REFERENCES
Books and Journals
Bently and Sherman, 2014. Intellectual property law. Oxford University Press, USA.
Bettig, 2018. Copyrighting culture: The political economy of intellectual property. Routledge.
DAILY, KIEFF and WILMARTH JR, 2014. Introduction. In Perspectives on Financing
Innovation (pp. 13-16). Routledge.
Davis, 2012. Intellectual Property Law Core Text. Oxford university press.
Deorsola, A. B. and et.al. 2015, Intellectual property and trademark legal framework in BRICS
countries: A comparative study. World Patent Information. 49. pp.1-9.
Hart, Clark and Fazzani, 2013. Intellectual property law. Palgrave Macmillan.
Kur, A., 2015. The EU Trademark Reform Package-(Too) Bold a Step Ahead or Back to Status
Quo. Marq. Intell. Prop. L. Rev. 19. p.15.
Kur, Planck and Dreier, 2013. European intellectual property law: text, cases and materials.
Edward Elgar Publishing.
May, 2015. The global political economy of intellectual property rights: The new enclosures.
Routledge.
Waelde and et.al, 2013. Contemporary intellectual property: law and policy. Oxford University
Press.
Online
Classification of trademarks. 2018. [Online]. Available through
:<https://www.gov.uk/guidance/how-to-classify-trade-marks>.
Pohlmann, A., 2015. The Interpretation of the Nice Class Headings in the European Union, Or
the Art of One Hand Clapping. Trademark Rep.. 105. p.815.
Tushnet, R., 2016. Registering disagreement: registration in modern American trademark
law. Harv. L. Rev. 130.s p.867.
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