Trademark Registration and Biocultural Heritage

This assignment delves into the realm of trademark registration and its connection to biocultural heritage. It presents a range of perspectives on the topic, from the use of collective trademarks by indigenous peoples in Peru's Potato Park to the benefits of trademark registration for financial services companies. The assignment also touches upon the importance of freedom of expression in ICANN's new gTLD process and provides insights into the turnkey reseller program for registering domain names. With a focus on providing valuable benefits, this comprehensive analysis is essential reading for anyone interested in the intersection of law, culture, and commerce.

Intellectual Property Law
CW 1 Referral

Table of Contents
INTRODUCTION...........................................................................................................................1
MAIN BODY...................................................................................................................................1
a) Advertising “Jingle” associated by the public with laptops produced by “Tablex”...............1
b) Shape of Male Torso, for packaging of Men's Fragrance “Macho Balm” by Booties...........4
CONCLUSION................................................................................................................................5
REFERENCES................................................................................................................................7

INTRODUCTION
Trade-mark is denoted as unique sign, design, expression or symbols which determine the
products or services of specific source. In simple words, special marks are also considered as
service-marks that means particular service is linked with single individual or organization.
However, legal bodies are trying to introduce some special laws and acts for controlling misuse
of trade-marks1. Along with this, norms which help in understanding the consequences of
registering process are also imposed by legitimate authorities. Therefore, in present assignment,
there is two case; one is of Tablex and another one is of Booties. Both of them are going to
acquire application for registering their specific sign or word as trade-marks. Thus, on basic
elements of registry, various grounds of refusal as well as nice classification of goods for both
trade-mark are outlined in this project.
MAIN BODY
a) Advertising “Jingle” associated by the public with laptops produced by “Tablex”
Trade-mark is a symbol which is designed by individual, legal entity or organisation
person for making their product unique or distinct from others in order to establish their positive
image at marketplace. In fact, every person is having their own opinion and style of designing
specific item such as; every cook is having different taste in their food like; white sauce pasta is
designed in several ways either accepted or rejected. On the other hand, one thing is also
determined that few people are misusing the trade-marks that are designed by creative people by
using several technology like; hacking is increasing at high extent 2. In the given scenario,
“Tablex” is an public association but engaged in producing laptop for facilitating society with
creative items. Thus, company has given the name “Jingle” and wanted to register it as a trade-
mark so that none other member or company can misuse it. Basically, number of authors are
expressing their viewpoints on the use of trade-marks that specific or any unique logos of an
1
Argumedo, A., 2013. Collective trademarks and biocultural heritage: towards new
indications of distinction for indigenous peoples in the Potato Park, Peru. London:
International Institute for Environment and Development.
2 Lipton, J. and Wong, M., 2012. Trademarks and freedom of expression in ICANN's new
gTLD process. Monash UL Rev., 38, p.188.

organization is highly beneficial. For example; Dale Campbell said that company or any
institution must use trade-mark for protecting their intellectual property from exploitative
activities.
2

According to given scenario, “Tablex” wanted to register their trademark as “Jingle” for
preventing their creativity from getting misused. However, legitimate bodies are ensuring that all
the formalities are appropriately fulfilled in order to control negative outcomes. An effective
process of registering trade-marks are discussed as follows:-
First or foremost is to acquire accurate information or data about registering a trade-mark
in order to defend name of the business and brand 3.
Registration of trade-mark is highly appropriate technique of preventing misuse of
company name and its work. In fact, process is not that much clear due to which individuals are
facing numerous issues while registering the trade-mark.
 Beginning with acquiring trademarks application- need to visit on suitable website for
clicking the button for further procedure.
(Source- UK TRADE MARKS, 2018)
3
Zimmerman, M. and Coffman, J., Go Daddy Group Inc, 2010. Turnkey reseller
program for registering domain names. U.S. Patent 7,644,117.
3
Illustration 1: UK TRADE MARKS

 Secondly, question is asked; who is registering either you or on the behalf of some other
person or a company as well as if you are authorized to do certain activity. Thus, if you
are not belong to legal party or entity then leave the existing option and select next
option.
 Requisite to fill the necessary details for controlling probabilities mistakes. For example;
arrange necessary certificates, information regarding company, e-mail address and so on.
Its time to fill the basic format of trade-mark 4.
 It is essential to upload image in case of advancement.
After examining the above process, selected firm need to follow other specific procedure
in order to control possibilities of errors. Mainly, while acquiring application for registering
following trade-marks various refusal grounds are identified such as;
 possibilities of rejection by advisory bodies in case of any wrongful information
(refusal grounds),
 chances of fraudulent act or name is might get rejected because of inappropriate word
(refusal grounds).
 Section 5 of trademark act is concerned about the relative grounds for refusal upon which
specific trade-mark might get rejected.
 Section 5 (1) of 1994 state that Trade-mark act is worried about the disputes where the
signs are identical and the products or services are also identical.
On contrary to this, number of individuals are believing that an association require to
clear all the statements before making decision of trade-mark registration in order to minimize
probabilities of rejection 5. Instead of all this, trade-mark registration of specific products or
services are segmented into various parts accordance with the international classification of
goods or services as per Nice agreement of section 40(1); rule 2(1) and rule 5. Additionally,
some of the major essential website for trade-mark offices are designed on the basis of goods or
services such as; UK patent office- http://www.patent.gov.uk/tm/t-find/t-find-class.htm.
4
Shupin, E.G., 2013. Trademark Law Finally Showing its Age in the Federal Circuit:
Senior Versus Junior Users in the Battle of Reverse Confusion. Fed. Cir. BJ. 23. p.87.
5 Alter, B.H., 2010. Trademark registration can provide financial services companies with
valuable benefits. Journal of Investment Compliance. 11(1). pp.59-61.
4

Throughout the study, it has been assessed that “Jingle” which is a trade-mark of
“Tablex” organization is encountered by various rejection while applying in registering process.
Moreover, requisite to consider few necessary laws or act as well as rules and regulations related
with trade-mark classification or register.
b) Shape of Male Torso, for packaging of Men's Fragrance “Macho Balm” by Booties
Trademarks are really affecting the minds of entire society because modern consumers
are really worried about the brand name of any product whatever they are going to use. Even,
legal bodies are involving in enacting numerous of useful laws or acts related with the trade-
mark issues. For example; in given case study “Booties” are going to launch the “Macho Balm”
in the shape of “Male Torso” which is already used by “Jean Paul Gaultier” for the fragrance of
“Le Beau Male”. It means the trade-mark which is designed by Booties for their Macho Balm
are initially followed by “Jean Paul Gaultier” and this idea is created by him initially 6. Thus,
negative consequences are going to incur when Booties are applying for registering process of
“Macho Balm”.
An effective process of registering trade-mark are-
 Need to apply.
 Read the entire guidelines after applying the procedure. For example; details of whatever
wanted to register like any word, logos, slogan and so on. Along with this, clauses related
with trade-mark need to mentioned.
 Cost of overall process.
Various types of fees are discussed further-
Type of application Fee Additional charges
Standard (online) Around £170 Nearly £50
Right start (online) £200 (£100 up front plus £100
if a person go forward with
registration)
£50 (£25 up front plus £25 if
an individual go ahead with
registration)
6 Argumedo, A., 2013. Collective trademarks and biocultural heritage: towards new
indications of distinction for indigenous peoples in the Potato Park, Peru. London:
International Institute for Environment and Development.
5

In the given case study company needs to focus on specific intellectual laws for
overcoming various issues related with trade-marks 7. However, in the eye of law if Booties are
using the trade-mark of Jean Paul Gaultier then registering authorities have the right to reject the
application on the basis of certain refusal grounds. Some of the major grounds of refusing are
discussed as follows:-
 Copied by others which is already available in the marketplace.
 Legal bodies was implemented number of acts related with intellectual property or trade-
mark such as; section 5 are liable for controlling wrongful activities.
Apart from this section 3 is playing vital role in refusing trade-mark and expressed
distinct grounds of rejection such as-
 specific mark is getting failed in fulfilling the requirement of actual definition of trade-
mark. (Article 1 of trademark act, 1994).
 Mark is destitute of typical character. (It means products is appropriately fulfilling the
expectations).
 It is designed solely of signs or any symbols which is engaged in describing the qualities
or features of particular goods or services. (For example; case of Dyson Vacuum cleaner
(C-321/03) Dyson Ltd vs. registrar of trademarks in which Dyson is trying to acquire a
trademark for an effective designs and his application get rejected because of the shape as
well as unwarranted protection. Another example is of Coca-cola bottle)
 Consist of word that is uncommon in use.
 Follow the actual shape which is required for product.
By analysing the above grounds it has been analysed that Booties are failed in following
all the necessary terms and conditions which is mentioned in section 3 of trade-mark 8. At the
end, it is identified that Booties application of designing their product registration in the shape of
Male Torso got rejected by registrar because all the above mentioned refusal grounds are
appropriately apply on this situations.
7 Al Sakkaf, F., 2018. One Trademark, One Application. Ct. Uncourt, 5, p.11.
8 UK TRADE MARKS, 2018. [Online]. Available
through<https://www.albright-ip.co.uk/trademarks/uk-trademarks/>.
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CONCLUSION
From the above report it has been summarized that applying of trade-mark is highly
complex because legal bodies was implemented numerous of acts which need to be fulfilled in
ethical manner. Throughout both studied cases, it is identified that company need to consider
necessary elements before registering the trade-mark in order to control probabilities of mistakes.
At the end, it has been understood that refusal grounds is also essential for creating a nation free
from exploitative acts by fulfilling each or every aspects in best manner. However, entire study is
focussing on explaining an appropriate procedure of acquiring application of registering trade-
marks. Along with this, showing several legitimate laws related with intellectual property like;
Nice classification of goods or services and so on.
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REFERENCES
Books and Journals
Argumedo, A., 2013. Collective trademarks and biocultural heritage: towards new indications of
distinction for indigenous peoples in the Potato Park, Peru. London: International
Institute for Environment and Development.
Lipton, J. and Wong, M., 2012. Trademarks and freedom of expression in ICANN's new gTLD
process. Monash UL Rev., 38, p.188.
Zimmerman, M. and Coffman, J., Go Daddy Group Inc, 2010. Turnkey reseller program for
registering domain names. U.S. Patent 7,644,117.
Shupin, E.G., 2013. Trademark Law Finally Showing its Age in the Federal Circuit: Senior
Versus Junior Users in the Battle of Reverse Confusion. Fed. Cir. BJ, 23, p.87.
Alter, B.H., 2010. Trademark registration can provide financial services companies with
valuable benefits. Journal of Investment Compliance, 11(1), pp.59-61.
Argumedo, A., 2013. Collective trademarks and biocultural heritage: towards new indications of
distinction for indigenous peoples in the Potato Park, Peru. London: International
Institute for Environment and Development.
Al Sakkaf, F., 2018. One Trademark, One Application. Ct. Uncourt, 5, p.11.
Online
UK TRADE MARKS, 2018. [Online]. Available
through<https://www.albright-ip.co.uk/trademarks/uk-trademarks/>.
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