Trade Marks Law and Legal Principles
Core concepts
A trade mark is a sign used to distinguish goods or services of one trader from those of others. Candidates must be fluent in the statutory definition of a trade mark, the absolute grounds of refusal (signs devoid of distinctive character, descriptive signs, customary signs, signs contrary to public policy or morality, deceptive signs, signs prohibited by law, and signs of protected emblems), and the relative grounds (earlier identical or similar marks, well-known marks, and unauthorised agent marks). Understand the distinction between inherent and acquired distinctiveness, and how use before the filing date can cure a descriptiveness objection.
Likelihood of confusion
Confusion analysis is the heart of the subject. You must be able to apply the global appreciation test: compare the marks visually, aurally and conceptually; compare the goods and services; assess the distinctive character of the earlier mark; and consider the relevant public's level of attention. Traps include treating each factor in isolation rather than as part of a single global assessment, and forgetting that a lesser degree of similarity between goods can be offset by a greater similarity between marks.
Reputation and dilution
For marks with a reputation, the three types of injury are blurring, tarnishment and free-riding. Remember that reputation, similarity and injury are cumulative requirements, and that dilution does not require confusion.
Worked example
If the earlier mark is a coined word with no meaning and the later mark differs by one letter but covers identical goods, the likelihood of confusion is high because the distinctive character of the earlier mark is strong and the goods are identical. Rule of thumb: first identify the relevant public and its attention level, then compare marks and goods, then weigh distinctiveness.