TTIPAB Trade Marks Attorney flashcards

32 cards. Read the term and the definition here. The deck at the top of this page is optional.

Capacity to distinguish

The core requirement that a sign must be able to distinguish the applicant's goods or services from those of others in the course of trade, assessed at the filing date.

Acquired distinctiveness

Distinctiveness gained through use of a mark in the market, proved by evidence such as sales figures, advertising expenditure, and consumer recognition, which can overcome an inherent distinctiveness objection.

Bad faith ground

An absolute ground of refusal where the applicant filed the application dishonestly, for example to block a competitor or to misappropriate another's mark, assessed at the filing date.

Genuine use

Use of a trade mark consistent with its essential function of guaranteeing origin, in the course of trade, for the goods or services registered, and not merely token or internal use.

Deceptive mark exclusion

An absolute ground excluding signs liable to mislead the public as to the nature, quality, or geographical origin of the goods or services; use cannot cure the objection.

Filing date

The date on which the minimum filing requirements are met, which fixes the priority of the application and the date for assessing absolute and relative grounds.

Priority claim

A claim to the filing date of an earlier application in a Paris Convention country, usually within six months, which must be supported by a priority document filed in time.

Counter-statement

The applicant's formal response to a notice of opposition, setting out which grounds are admitted or denied and the basis of the defence, filed within the prescribed period.

Statutory declaration evidence

A written statement of facts sworn or affirmed before a authorised person, commonly used in opposition and revocation proceedings instead of oral testimony.

Renewal period

Registration lasts ten years from the filing date and is renewable indefinitely for further ten-year periods, with a grace period after expiry in many jurisdictions.

Nice Classification

An international system of 45 classes (34 goods, 11 services) used to classify goods and services in trade mark applications and to calculate fees.

Specific goods and services

Terms describing goods or services must be clear and precise; broad claims to all goods in a class are generally not accepted by examiners.

Phonetic search

A search technique that identifies marks that sound similar to the proposed mark, including misspellings and transliterations, to detect potential conflicts.

Non-traditional mark

A mark such as a colour, shape, sound, or smell; its representation must be clear, precise, self-contained, and objectively determinable to be registrable.

Consent agreement

An agreement between the applicant and the proprietor of an earlier mark permitting registration, which the Registrar may consider when assessing relative grounds.

Likelihood of confusion

A global assessment that the average consumer may believe goods or services come from the same or economically linked undertaking, based on mark and goods similarity.

Well-known mark

A mark with substantial reputation in the relevant market, protected even without registration in the country, where use would take unfair advantage or cause detriment.

Revocation for non-use

A proceeding to cancel a registration where the mark has not been genuinely used for five continuous years, subject to proof of proper reasons for non-use.

Genericide revocation

Cancellation of a mark that has become the common name in the trade for the goods or services, proved by dictionary entries, trade usage, and consumer evidence.

Acquiescence defence

A bar to invalidity based on relative grounds where the proprietor knew of the later mark's use and acquiesced for five years, unless the later mark was filed in bad faith.

Conflict of interest

A situation where a practitioner's duty to one client conflicts with a duty to another client or a personal interest, requiring disclosure and informed consent or withdrawal.

Client confidentiality

The duty not to disclose client information without consent, except where required by law or to prevent serious harm, and to protect it from unauthorised access.

Costs disclosure

The obligation to inform the client in writing of fee arrangements, estimates, and changes, so the client can make informed decisions about the matter.

Trust account

A separate account for holding client money, kept distinct from the practitioner's own funds and subject to accounting and audit requirements.

Continuing competence

The duty to maintain and update professional knowledge and skills, including through continuing professional development, and to act only within one's competence.

Copyright originality

The requirement that a work be the author's own intellectual creation, fixed in a material form, to attract copyright protection; ideas and facts are not protected.

Passing off

A common law action protecting goodwill, requiring proof of reputation, a misrepresentation by the defendant, and damage or likelihood of damage to the claimant.

Registered design overlap

A registered design protects a product's appearance and may coexist with trade mark protection for shape marks, though the tests for validity and infringement differ.

Paris Convention priority

A six-month right, for trade marks, to claim the filing date of an earlier application in a member country when filing in another member country.

Madrid System

An international registration system allowing one application to designate multiple member states, with each designated office examining under its national law.

TRIPS minimum standards

The WTO agreement setting minimum trade mark protection, including registration of service marks and protection of well-known marks, binding on member states.

EUTM unitary right

A European Union trade mark covering all member states as a single right, examined by EUIPO and coexisting with national trade mark systems.