TTIPAB Trade Marks Attorney key terms

Dishonest or improper motive when filing, such as seeking registration to block rivals or to profit from another's goodwill, without genuine intent to use the mark in trade.

Honest, genuine commercial use of an unregistered mark before another party's filing or priority date; may support an opposition ground or a defence of honest concurrent use.

A mark registered by a certifying body to indicate that goods or services meet defined standards, such as origin, material or method of manufacture; the owner does not trade under it.

The general wording summarising the goods or services in a class of the Nice Classification; class headings do not automatically cover every item in the class and must be construed by their ordinary meaning.

A mark registered by an association or group, used by its members to distinguish their goods or services from those of non-members; governed by rules of use filed with the application.

A comparison test asking whether two marks, considered as wholes with due weight to distinctive and dominant elements, are sufficiently alike that ordinary consumers may mistake one for the other.

A registration extending protection of a well-known mark to goods or services beyond those actually used, available only where the mark is highly distinctive and widely known, to prevent dilution.

A mark consisting exclusively of signs or indications that designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services; generally unregistrable absent acquired distinctiveness.

Harm to a well-known mark through blurring (weakening its distinctive power) or tarnishment (damaging its reputation), independent of any likelihood of consumer confusion about source.

A statement in an application or on the register that the applicant claims no exclusive rights in a specified non-distinctive word or element of the mark, made to overcome an objection.

The written opinion issued during examination setting out objections such as descriptiveness, lack of distinctiveness or earlier conflicting marks, and the deadline for responding.

The principle that once goods bearing a mark are put on the market by the owner or with consent, the owner cannot use the mark to prevent their further resale in that territory.

A word that has become the common name for a product or service rather than an indicator of origin, and so cannot function as a trade mark, often through the owner's own misuse.

A discretionary defence or exception allowing registration where two parties have used similar marks honestly and simultaneously in the same market, so that confusion is unlikely or outweighed by other factors.

The principle that consumers rarely compare marks side by side and rely on an imperfect mental picture, so small differences may not prevent confusion between otherwise similar marks.

A declaration or requirement that the applicant genuinely intends to use the mark on the specified goods or services; a false declaration may support invalidity or opposition.

A permission granted by the owner allowing another person to use the mark under agreed conditions; may be exclusive, sole or non-exclusive, and should be recorded on the register.

The core infringement and opposition test: whether, because of similarity of marks and goods or services, the relevant public may believe the goods or services come from the same or economically linked undertakings.

The international system dividing goods (classes 1-34) and services (classes 35-45) for trade mark registration, administered under the Nice Agreement and updated periodically.

Post-acceptance proceedings in which a third party, within the prescribed period, objects to registration of a published application on grounds such as prior rights or descriptiveness.

Importing genuine branded goods through channels not authorised by the mark owner; lawful or not depending on whether the jurisdiction applies national, regional or international exhaustion.

The right, under the Paris Convention, to claim the filing date of an earlier application in another member country as the effective date in a later application, usually within six months.

The date from which the applicant's rights are measured against earlier marks and later filings, being the filing date or an earlier date validly claimed under a priority convention.

Earlier rights held by another party, such as an earlier registered mark, well-known mark, company name or copyright, that may be relied on to oppose or invalidate a later application.

A notification by the Registrar that an application has not been accepted, stating the grounds and giving the applicant an opportunity to respond, amend or request a hearing.

Removal of a registration because the mark has not been genuinely used in the relevant territory for a continuous period (commonly five years) for the registered goods or services, without proper reason.

The list in an application defining the exact goods or services the mark will cover, which must be clear, precise and classified; its scope limits the rights granted.

A mark that is capable of distinguishing the applicant's goods or services from others; marks devoid of distinctive character, descriptive or customary are refused unless they acquire distinctiveness.

Distinctiveness gained through extensive use and promotion so that the public identifies the sign with one trader, allowing registration of an otherwise descriptive or non-distinctive mark.

The transfer of ownership of a registered or unregistered mark, which may be with or without the goodwill of the business and should be recorded to preserve rights against third parties.

A mark recognised by the relevant authority as widely known in the market, entitled to broader protection against similar or dissimilar goods where use would cause confusion or damage.

An international registration system allowing applicants to seek protection in multiple member jurisdictions through one application filed with their office of origin, administered by WIPO.

Genuine branded products sold through unauthorised distribution channels; their status depends on the exhaustion doctrine and whether the owner consented to the original sale.

A charge or lien granted over a registered mark as collateral for a debt; recordal on the register gives notice and protects the lender's priority.

A situation where a practitioner's own interests or duties to another client may compromise independent advice to a client, requiring disclosure, consent or withdrawal.

The professional duty not to reveal information learned in the course of the retainer without authority, continuing after the relationship ends and subject to limited legal exceptions.

The protection from compelled disclosure of confidential communications between a client and legal adviser for the purpose of obtaining legal advice or conducting litigation.

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