TTIPAB Trade Marks Attorney cheat sheet

A trade mark is a sign used or intended to be used to distinguish goods or services dealt with or provided in the course of trade from those of others; capacity to distinguish is the core statutory concept.

Absolute grounds (inherent distinctiveness) are assessed at the filing date; relative grounds (prior rights, bad faith) are assessed at the filing date, while later acquiescence can bar a relative-grounds attack.

Descriptiveness is judged from the perspective of the relevant consumer in the relevant market, not from the trader's perspective; a term need not be in a dictionary to be descriptive.

Acquired distinctiveness through use must be proved for the goods/services actually covered; use as part of a composite mark or as a secondary element carries reduced weight.

A sign that is customary in the current language or in the bona fide and established practices of the trade is excluded from registration, even if it was once distinctive.

Deceptive marks (signs liable to mislead as to nature, quality, or geographical origin) are absolutely excluded and cannot be cured by use.

Bad faith is an absolute ground assessed at filing; it can survive even where the applicant later acquires goodwill, and it is assessed on the applicant's knowledge and intention at the filing date.

Use requirements (revocation for non-use) generally run in five-year periods; the burden of proving genuine use falls on the proprietor once the applicant raises the issue.

Genuine use means use consistent with the essential function of guaranteeing origin; token use, internal use, and use only for spare parts or export packaging may not qualify.

An application must specify the sign, the goods/services, the class(es), and the applicant's name and address; a filing date is normally the date the minimum requirements are met.

The Registrar must examine for absolute and relative grounds; where objections are raised, the applicant may file written submissions, request a hearing, or amend the application.

Adequate time limits for responding to examination reports are set by the Registrar; extensions are discretionary and must be requested before expiry.

Where the applicant claims priority, the priority document must be filed within the prescribed period; failure to file can result in loss of the priority claim.

Amendment of an application after filing is permitted only where it does not substantially affect the identity of the mark or extend the goods/services; post-publication amendments are more restricted.

Opposition is commenced by filing a notice of opposition within the prescribed period after publication, followed by a counter-statement by the applicant; failure to file a counter-statement may result in the application being deemed withdrawn.

Evidence is usually filed by way of statutory declaration or affidavit; each party has a set period for evidence-in-chief, with a right of reply evidence by the opponent.

Hearings before the Registrar may be conducted in person, by written submissions, or by video/telephone; costs are usually awarded on a scale set by the Registrar.

Registration lasts ten years from the filing date and is renewable indefinitely for further ten-year periods; renewal may be requested within the prescribed grace period after expiry.

The Nice Classification has 45 classes (34 goods, 11 services); class headings are not exhaustive, and each item of goods/services must be specified clearly and precisely.

A broad claim to 'all goods in class X' is generally not acceptable; the Registrar requires specific terms and may object to vague or functional wording.

Pre-filing searches should cover: identical marks, similar marks in the same or related classes, and marks with similar conceptual or phonetic elements.

Search strategies should consider phonetic equivalents, translations, transliterations, and common misspellings, especially for word marks in non-Latin scripts.

Examination considers the mark as a whole; where a mark contains a descriptive element, the distinctiveness of the composite must be assessed overall.

Where the applicant claims a colour, shape, sound, or other non-traditional mark, the representation must be clear, precise, self-contained, and objectively determinable.

Relative grounds examination may involve citation of earlier marks; the Registrar may notify the applicant of conflicting earlier marks, and the applicant may need to obtain consent or provide evidence.

Where a mark is refused, the applicant may amend to narrower goods/services, provide evidence of acquired distinctiveness, or appeal to the relevant court or tribunal.

Opposition must be based on specified grounds; common grounds include earlier identical/similar marks, well-known marks, bad faith, and breach of copyright or passing off.

The opponent must establish earlier rights as at the filing date of the opposed application; later-acquired rights cannot support opposition.

Likelihood of confusion requires similarity of marks and similarity of goods/services, assessed globally from the perspective of the average consumer.

For well-known marks, the opponent must show reputation and that use would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

Revocation for non-use requires five years of non-use following registration; the proprietor may defeat revocation by proving genuine use in the relevant period or proper reasons for non-use.

Revocation for genericide requires proof that the mark has become the common name in the trade for the goods/services; evidence includes dictionary entries, trade usage, and consumer surveys.

Invalidity may be sought on absolute or relative grounds; where the ground is relative, the proprietor may rely on acquiescence after five years of knowledge of use.

In proceedings, the parties may be required to file evidence, attend a case management conference, and make submissions; the tribunal may order costs and may allow amendment of pleadings.

Settlement is encouraged; parties may enter into a coexistence agreement, but the tribunal must be satisfied the agreement does not mislead the public.

A practitioner must act in the client's best interests, maintain confidentiality, and avoid conflicts of interest; where a conflict arises, informed consent and independent advice are required.

A practitioner must not act where they have a personal interest in the matter, or where their duty to the client conflicts with a duty to another client or a third party.

Fee arrangements must be disclosed in writing and must be reasonable; contingency or conditional fees may be permitted where allowed by law, but must be explained clearly.

Practitioners must keep clients informed of material developments, respond to communications promptly, and provide clear costs estimates and updates.

A practitioner must not mislead the tribunal or the Registrar; this includes not making statements that are known to be false or reckless.

Where a practitioner discovers an error, they must inform the client promptly and take reasonable steps to rectify it, including notifying the Registrar where appropriate.

Client money must be held in a separate trust account and accounted for; commingling with office funds is prohibited.

Practitioners must maintain competence and undertake continuing professional development; acting outside one's competence without appropriate supervision is a breach.

Copyright protects original expression fixed in a material form; it does not protect ideas, facts, or mere information.

Copyright and trade mark rights can coexist; a logo may be protected by both, and enforcement may involve both causes of action.

Design rights protect the appearance of a product; a registered design may overlap with trade mark protection for shape marks, but the tests differ.

Passing off protects goodwill and requires proof of reputation, misrepresentation, and damage; it can be used where a mark is unregistered.

Confidential information and trade secrets are protected by contract and equity; misuse can be restrained by injunction.

Domain names are not trade marks but may be protected through trade mark rights and dispute resolution policies such as UDRP.

Geographical indications protect names linked to a place of origin; they may conflict with trade marks and are subject to specific statutory regimes.

Plant variety rights, patents, and trade marks are distinct regimes; a single product can be protected by multiple rights simultaneously.

The Paris Convention provides for priority rights (six months for trade marks) and national treatment; it does not create a unitary international registration.

The Madrid System allows a single international application designating multiple member states; examination is carried out by each designated office under its national law.

The TRIPS Agreement sets minimum standards for trade mark protection, including registration of service marks and protection of well-known marks.

The Nice Classification is used by most national and regional offices; the Vienna Classification applies to figurative elements of marks.

The European Union trade mark (EUTM) is a unitary right covering all member states; it coexists with national trade mark systems.

The Andean Community, ARIPO, OAPI, and the Benelux system are regional systems with their own registration procedures and effects.

Well-known marks are protected under Article 6bis of the Paris Convention and TRIPS Article 16, even without registration in the country of protection.

Comparative law shows divergence on absolute grounds, especially on shape marks, colour marks, and bad faith; practitioners must check local law before filing.