Trade Marks Law and Practice
Registrability
A trade mark must be a sign capable of distinguishing the applicant's goods or services. Candidates must apply the grounds for rejection: lack of distinctiveness, descriptiveness, genericness, and deception or confusion. Traps: assuming a descriptive word becomes registrable merely because it is misspelt; overlooking that a surname may be registrable if it has acquired distinctiveness.
Prior rights and opposition
The Registrar must consider prior conflicting marks and prior use. Opposition grounds include prior use, prior registration, and bad faith. Candidates should know that the applicant bears the onus of showing registrability where an objection is raised.
Infringement and defences
Infringement requires use as a trade mark in the course of trade in relation to the same or similar goods, likely to deceive or cause confusion. Defences include honest concurrent use, prior continuous use, and use of one's own name. Traps: treating descriptive use as infringement; and forgetting that a defendant may counterclaim for removal for non-use.
Worked example
A trader adopts "PREMIUM BLUE" for paint. The word "premium" is descriptive and "blue" is a colour descriptor; the combination may still be registrable if it has acquired distinctiveness through use. Rule of thumb: ask first whether the sign distinguishes, then whether use would confuse.