The Gazette 1996

GAZETTE

NOVEMBER 1996

Licensing Licensing is dealt with expressly for the first time in the 1996 Act. The former Act did not deal specifically with licensing, but only in the terms of registered user. In the new Act (Section 32), a licence may be general or specific, and may apply in relation to some or all of the goods or in relation to a particular locality. There is provision in the Rules implementing the Trade Mark Act to register a licence with the controller although it is not obligatory to do so. A licensee is entitled under Section 34 of the Act to bring proceedings for infringement in his own name in circumstances where the proprietor has failed to do so. Registration There are significant amendments to the registration procedure within the Act. Previously, the registry was divided into two sections; Part A and Part B. This division has now been abolished and there is one remaining section the requirements for which are quite similar to the old Part B registration: that is, it only requires a lower standard of distinctiveness. The new Act also provides for a new registration period of ten years which can be renewable in place of the previous seven year renewable term (Section 47). Famous trade marks Section 14(3) of the Act provides protection to a famous trade mark in a situation where a person uses a trade mark identical or similar to the famous trade mark, taking advantage of the reputation of the trade mark, even in circumstances where the famous trade mark may have a reputation in this State, but would not be registered or trading here. Collective trade marks Section 54 of the Act allows for members of an association which is the proprietor of a trade mark to register it as a "collective mark" to distinguish the goods or services of members of the association which is the proprietor of the mark, from those of other undertakings.

jurisdictions, it is expected that such applications will only be acceptable upon very strong evidence that the colour is the principal distinctive element in the trade mark. For example, Kodak have been successful in many jurisdictions in registering Kodak yellow as a trade mark. GROUNDS FOR REFUSAL OF REGISTRATION There are two different sets of grounds for refusal set out in section 8 to section 12 of the new Act. Firstly, there are the absolute grounds for refusal as follows: Section 8 (a) A sign which does not satisfy the requirements set out in the definition of a trade mark in Section 6.1. of the Act. (b) A trade mark which is devoid of any distinctive character. (c) Trade marks which consist exclusively of signs or indications which may serve in trade to designate the kind, quality, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services. exclusively of signs or indications which have become customary in the current language. The remaining parts of that section prohibits a sign which is not registered but consists of a particular shape resulting from the nature of the goods, a shape to obtain a technical result, or a shape which gives substantial value to the goods. Further, the standard prohibitions are included against registrations which would be contrary to public policy, or intended to deceive the public, or prohibit it in the State by any rule of law, or, finally, an application made in bad faith. Section 10 Section 10 sets out the relative grounds for refusal of registration. These include a new provision disallowing a trade mark which because it is either identical (d) Trade marks which consist

or similar to an earlier trade mark and would be registered for services identical or similar to an earlier trade mark, there exists a likelihood of confusion, including a likelihood of association. The new provisions here are the concept of a similar trade mark and the concept of a likelihood of association.

RIGHTS OF PROPRIETOR: PROTECTION AGAINST INFRINGEMENT

Sections 13 to 25 of the 1996 Act which deal with the extension of rights afforded to a trade mark proprietor and the ability to enforce same will have particular relevance for any litigation practitioner. Again, these rights have been broadened, principally with the introduction of the two concepts already referred to above: firstly, the extension of a trade mark proprietor's right to enforce his trade mark registration in a manner which would stop the use of a similar trade mark of similar goods or services for which the trade mark is registered; secondly, the concept of likelihood of association has been included here in addition to the likelihood of confusion. The test of likelihood of association should mean that where a third party uses a similar design to its brand or logo, but places a different trade mark or house mark on that logo, the registered proprietor holding the original design may be able to prevent use. The introduction of these two principals will obviously increase the importance of trade mark registrations and may well allow a trade mark proprietor to take an infringement action in circumstances where formerly he would have had to rely on the common law of passing off. Section 28 of the new Act provides that a trade mark can be assigned with or without the goodwill associated with it, and there are no requirements for publishing a trademark assigned without goodwill as in the 1963 Act. There is also, for the first time, a limited form of assignment allowable in relation to certain goods or in relation to a certain locality. GENERAL PROVISIONS Assignment

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