Summary Notes on Intellectual Property Law : Trade mark

assalam & salam sejahtera

Intellectual Property Law : Trade mark

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TRADE MARK

è  GEN. CONCEPT :

§  TM is similar to ‘passing off’ in term of the protection of the ‘goodwill’.

§  The diff. between the two is that for PO, the element of proving the ‘goodwill’ is a compulsory one, but for TM, as it is a registered version of PO, only the ‘marks’ must be proven.

§  Besides, passing off is not limited to the ‘marks’ only, as what TM limited to.

§  When a ‘marks’ is registered under TM, it gives the owner a monopoly rights over the marks, which will indirectly prevent others from using the same marks.

è  ADVANTAGES OF REGISTERING THE MARKS :

§  Via the registration book, the businessman needs not to prove any ‘goodwill’ element.

§  The businessman also doesn’t need to prove for misrep. / loss.

§  Sec. 30 of TM Act : The marks is protected once the filing of application for registration is made. Here, the businessman can enjoys the protection over his registered marks although he never used it.

§  The registration book is made public, so less risk for others to use the same marks.

§  The protection extends to all part of Malaysia.

§  All the rights stated in the TM Act.

è  DISADVANTAGES OF REGISTERING THE MARKS :

§  Costly.

§  Taking time.

§  The marks have a validation period.

§  Application for the registration is subjected to any opposition, which will lead to additional cost upon the applicant.

§  Even the marks has been registered, it can be void for certain reason.

§  Types of marks that can be registered is very much limited.

è  ADMINISTRATION RELATING TM :

§  Refer Sec. 4(1), 4A, 5 and 6, as this gen. talk about who own the power to get things registered and etc.

è  ELEMENTS OF REGISTRATION FOR TM :

1)    The mark must be the trade mark as per Sec 3.

2)    Use / proposed to be used in relation to goods / services.

3)    Mark must show connection with the course of trade between the goods / services & the registered proprietor.

4)    Mark must be distinctive.

5)    Mark must not be within the class of restricted mark.

1.     The ‘marks’ must be the ‘trade mark’ within the def. stated in :

♥        Section 3(1) of TMA = TM is any marks used to indicate connection in the course of trade between goods / services and the proprietor.

♥        ‘Marks’ here include device / brand / heading / label / ticket / name / signature / word / letter / number / any combination.

♥        Section 13(1) of TMA = Colour as Sec. 3(1) is not included in the scope of TM, but here it may be registered as TM if the applicant can prove such specified / whole colour is very distinctive that that it is not a mere descriptive in nature.

♥        Smell of fragrance is not within the scope of TM as per Sec. 3 of TMA.

è  Case : Baskin Robbins

Held : The number ‘31’ is considered as within the scope of a marks, as here they wanted to reg. the 31 types of flavours.

è  Case : Re Coca Cola

Held : The shape of bottle is not recognized as a type of marks. *But if let say the shape of the bottle is very unique, you may argue it as being able to register.

2.   Used / proposed to be used in relation to Goods / Services

♥        Section 46 of TMA = The TM must be used / proposed to be used in good faith in relation to the goods / services.

è  Case : Ducker’s TM

Held : The TM must either be used / proposed to used. It must be noted that although ‘proposed to use conquer a future commitment, but this would means as to refer to the applicant ‘real intention to use, and not a mere uncertain intention’. And this intention must be the bona fide one. The time to prove this future real intention is at the time of the application being made.

è  Case : THERMAX TM

Held : The marks have not been used due to some technical prob. If as per Sec. 46 of TMA, it would render such TM to be void. (TM will be render void if the TM is registered not in bona fide usage for 1 month before application / 3 years after application made no usage has occurred.)

è  Case : Pussy Galore

Facts : An application was made to register mark ‘Pussy Galore’. The words had some connection with the well-known fictional characters of James Bond. The intention of Pf here is to get such mark register so that others will stop using that mark.

Held : The registration failed as no bona fide intention was found before the court. Here the Pf only intention is to prevent others from using that mark.

ü  How the Mark is used / proposed to be used by an indi?

z  Sec 3(2)(a) (b) and (c) – use as printed or visual representation of the mark / a mark is used in relation to the goods (eg : advertisement) / a mark is used in relation to the services (eg : the tissue or note book that have the registered Hotel’s mark on it).

3.     To Mark MUST indicate a connection in the course of trade between the goods or services and the registered proprietor.

è  Case : Powell`s TM

Held : A TM must give an indication to the purchaser as to the manufacturer or quality of the goods.

è  Case : Aristoc v Rysta

Facts : The R carries out stocking repair service where they`ll mark the stocking with the word ‘Rysta’ after the repair. They later wanted to register the mark.

Held : The application was rejected because the mark does not show any connection to the goods` origin i.e. the manufacturer of the stockings. *The position is different now as mark could now be used in relation to services*

4.   Mark must be ‘disctinctive’

♥        Sec 10(1) : For the marks to be registered, it must at least contains one of ‘Registrable TM’ (will be list down below.)

♥        Sec 10(2A) : Distinctiveness = the TM must be capable of distinguishing the goods or services, with which the proprietor of the TM is connected in the course of trade, from goods or services in the case of which has no such connection.

♥        Sec 10(2B) : Whether the TM is capable of distinguishing, regards can be given to whether the TM is inherently capable of distinguishing (inherent distinctiveness) or by reason of the use of the TM, the TM is in fact capable of distinguishing (factual distinctiveness)

ü  Registrable TM (Section 10 of TMA)

♥        Name of individual, company or firm represented in a special or particular manner – Sec 10(1)(a)

Ø  Sec 16 : For the usage of someone else’s name, his / her consent must be obtained.

Ø  Name in itself is not distinctive. But if it is represented in a special and particular manner, then it may become distinctive.

è  Case : Re Standard Cameras

Facts : The mark consisting of the name ‘Robin Hood’ with the letter ‘R’ incorporating a device of an archer and the final ‘D’ a device of a target.

Held : It was represented in a special manner and thus registrable.

è  Case : Fanfold Ltd

Facts : The word ‘FANFOLD’ printed in block letters in the form of a slight curve and ‘Ltd’ in smaller type font underneath the ‘FANFOLD’.

Held : It is not special and hence not registrable.

♥        Signature - Sec10(1)(b)

Ø  Only the signature of the applicant or the predecessor of his business is allowed & it is regarded to be inherently distinctive with others.

♥        Invented words 

Ø  ‘New and freshly coined’ words & not a generic word that could be found in the dictionary. This is because if a generic word is allowed to be register, it would deprive anyone of the right to use the existing vocabulary

è  Case : Eastman Photographic LTD Application

Held : Generally, if an English word is not registrable as TM, that word in other languages would not be registrable too. But if the word has to be translated before it is understandable by a common man, such foreign word, it is registrable. The court in this case held that although the word ‘Solio’ means the sun in Latin, such word was not common in UK. Hence, the word is new and freshly coined. It is not necessary that the word must be wholly meaningless. The application was allowed because its registration does not deprive anyone of the right to use existing vocabulary as he pleases

è  Case : Smitsvonk NV`s Application

Facts : The mark consisting an invented word because ‘Smit’ is a famous Dutch surname and ‘vonk’ means sparks in Dutch wanted to be registered.

Held : It is a mere combination of 2 words which necessarily create and invention.

è  Case : Tarzan TM

Facts : The word ‘Tarzan’ had passed into the language of the society and is well-known by every adult and children. Held : It is not freshly coined – not an invented word.

è  Case : Yomeishu Seizo

Facts : ‘Yomeishu’ is a combination of three kanji characters in a Romanized form. The word had ceased to be used for a long time.

Held : It is an invented word as it is no longer common.

Ø  Word purposely misspelled is not an invented word  

è  Case : Edward Ripley

Facts : The word ‘Pearl’ is purposely misspelled as ‘Pirle’.

Held : Not registrable.

è  Case : Orwoola

Facts : The word ‘Old-Wool’ had misspelled to ‘Orwoola’.

Held : It is not registrable as it is an intentional act of misspelling the words in order to get it registered.

Ø  An addition of diminutive (Suku kata pendek) is not an invented word .

è  Case : SMT Gramophone

Facts : Since the word ‘Console’ is common in the gramophone trade, the application apply to register ‘Consolette’.

Held : Application was rejected because it is not an invented word.

è  Case : Chemico TM

Facts : The word ‘chemic’ is popularly used in relation to chemistry and the applicant had merely added diminutive ‘o’ to make it seems meaningless.

Held : Application is rejected.

Ø  Words having no direct reference/description to the (i) quality or characteristic of the goods and (ii) a geographical name or surname – Sec 10(1)(d) – REGISTRABLE as invented words

♥        The general rule is that descriptive words are common property, it belongs alike to all and no one ought to be permitted to prevent others from using it.

♥        ‘Quality or Characteristic’ refer to the composition, natural characteristic, size, shape, colour, the use of the product, the wrappers of the goods, price and the way the goods sell out to public.

♥        Here, it refer to the usage of descriptive words which is prevented from being registered as TM.

♥        Generally, if an English word can’t be registered as TM, this mean that word irrespective of what languages it is translated will render the same position. BUT if such words needed to be explained and interpreted to the public before they can understand the meaning, such word is registrable, as it is regarded not descriptive in nature.

è  Case : Mark Foy v Davies Coop

Held : The test is ‘the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to their mind either the nature or some attributes they possessed’.

è  Case : Eastman Photographic LTD Application

Held : Refer to the discussion of case before this.

♥        Besides, it cannot refer to any geographical status.

Eg : Your product of tea from the Cameron Highland, you can’t register the TM of “Cameron Highland Tea” as that is merely describing where the tea come from .

è  Case : Farah TM

Facts : The word ‘Farah’ is a name of town and province in Afghanistan. However, it is not a common geographical name in Ireland.

Held : Registration allowed.

♥        It is hard to have the Descriptive Word be registered despite the fact that it may be ‘factually distinctive’ as other businessmen in the same industry will be prevented from using that word to describe their product.

è  Case : Crosfield’s Application

Facts : The word ‘Perfection’, in its application to the usage of soap, is a mere laudatory word and it was not adapted to distinguish the goods from other soaps.

Held : Application denied.

è  Case : Tastee Freeze Int’l LTD

Facts : The word ‘Tastee-Freeze’ is a combination of highly descriptive word ‘Tastee’ (tasty), even though it is obviously misspelt, and when coupled with the word ‘Freeze’, it renders the mark as a whole highly descriptive of frozen foods.

Held : Application not registrable.

è  Case : Heavenly TM

Held : Application for the word ‘Heavenly’ cannot be registered because it had a laudatory meaning.

è  Case : York TM

Held : Application for the word ‘York’ is descriptive of a well-known city ‘Yorkshire’ in England and this it is not registrable.

Ø  Any other distinctive mark – s10(1)(e) - REGISTRABLE as invented words

♥        Definition of ‘distinctive’ see Sec 10(2A) and (2B)

♥        2 categories available :

ü  Inherent distinctiveness = Distinctive in itself from everything else eg. invented words that never been used before.

è  Case : Smith, Kline and French Laboratories

Held : The test is ‘whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some marks nearly resembling it, upon or in connection with their own goods’ – If yes, then it is inherently distinctive.

ü  Factual distinctiveness = No inherent distinctiveness but become distinctive through usage over time – advertising and promotion can give this distinctiveness.

♥        Regardless of inherent or factual distinctiveness, the primary enquiry is still ‘whether the mark is inherently adapted to distinguish’.

5.   Restriction On Registration Of TM

♥        Sec 14 (a) to (g) – A mark will not be registered if :

Ð(a) The use of which is likely to deceive or cause confusion to the public.

è  Case : China Therm

Facts : Application to register the mark ‘China Therm’ in relation to containers and cups made of plastic materials (instead of thermos) is likely to cause confusion and deception to the public.

Held : Registration not allowed.

è  Case : Orwoola

Held : Registration not allowed as the mark was held to be deceptive when used in relation to goods not wholly made of wool

Ð(a) Contrary to Law.

è  Case : Karo Step

Facts : The four pointed star of Karo Step was used by the applicant and the respondent had registered it without the applicant`s consent.

Held : Registration not allowed as to allow the registration of the mark would amount to infringement of the copyright of the applicant.

Ð(b) Scandalous or Offensive

è  Case : Hallelujah’s Application

Held : Registration not allowed as the word ‘Hallelujah’ in respect of clothing would offend some quarters of the public

Ð(c) Prejudicial to the interest of the nation.

è  Case : Edward’s Application

Held : Registration not allowed for the registration of ‘Jardex’ as TM for disinfectants was refused because it conflicted with an existing mark ‘Jardex’ registered in respect of meat extract. Possibility that consumers might mistake ‘Jardex’ disinfectants as ‘Jardex’ meat extracts and thus put their health at risk

Ð(d) &(e) Identical with mark which is well known in M’sia for goods not the same as those in respect of which registration is applied.

♥  Provided the use of the mark in relation to those goods would cause public to indicate a connection between those goods and the proprietor of the well-known TM, and are likely to damage the his interest.

è  Case : Radio Corp v Disney

Held : Registration not allowed for the registration of ‘Mickey Mouse’ and ‘Minnie Mouse’ in respect of radio-receiving sets and kits even though Walt Disney had not used these marks as it would lead to deception as to the source of the products

Ð(f) &(g) Contains geographical indication with respect to goods not originating in the territory indicated which the use is of such a nature as to mislead the public as to the true place of origin of the goods.

è  Case : Scotch Whisky Association

Held : Registration not allowed the mark ‘Scotch Whisky’ denotes alcohol distilled in Scotland and to allow the use of that mark on local alcohol would cause confusion to the public as to the origin of the liqueur.

♥        Sec 19 (1) & (2) – A mark will not be registered if :

Ð(1)(a)It is identical with that belonging to another registered proprietor in respect of  

ü  The same goods or

ü  The same description of goods or

z  Qs : Whether 2 or more goods are at the same description?

z  This very much based on the Facts & cannot be determined merely by referring to the classification of goods in the 3^rd schedule.

è  Case : Jellinek’s Application

Held : To determine if goods are of the same description, must take into account :

            i.         Nature of the goods in qs

           ii.         The of the goods

         iii.         The trade channels via which they are sold

ü  Services that are closely related to those goods.

z  Important factor is : Whether the service was given using the goods?

è  Case : Jellinek’s Application

Held : To determine if goods are of the same description, must take into account

Ð(1)(b)It so nearly resembles that belonging to another registered proprietor as is likely to deceive or cause confusion.

è  Case : Pianotist’s Application

Held : Factors to be taken into account :

i.            You must judge both words by their look & sound.

ii.            You must consider the nature & kind of customer who would likely to buy those goods.

iii.            You must consider what is likely to happen if each of those TM is used as TM for the goods of the respective owners of that marks.

·          If after considering the above factors you come into conclusion that there will be confusion in the mind of public which lead to confusion in the goods, the registration ought to be refused.

è  Case : Sandows’s Application

Facts : The application to register a device mark which consists letter ‘S’ entwined round the laurel wreath (refer pict). Mark was used in relation to underwear. Application is opposed by the registered owner of the TM which consisted letter ‘S’ entwined around the device of a bird. The mark was also in respect of underwear.

Held : The application was rejected after consideration is made upon the goods in term of how the TM will appear when placed upon the goods. As both marks will look very small when used on underwear & taking into account the doctrine of imperfect recollection (discuss after this), it shall be rejected.

   Eg of  TM surrounded by Laurel Wreath.

è  Case : Re Lovren v Konsted

Held : Both parties were in line of medicine & their product names were ‘Leocilin’ resembled ‘Ledercilin’ hence the court stated that latest application should failed as it resembled  the other mark.

Ð(2)Same provision as above but applied for services.

z  THEN WHAT IS THE DIFF BETWEEN SEC 14 vs 19???

ü  S19 presupposes the existence of a registered tm whereas S14 applies even though there may not be any registered TM.

ü  S19 covers any cases where the mark has been used in respect of same goods, same description of goods / services that are closely related to those goods. While S14 extends to cases where that mark has been used upon goods of a diff. description from those for which registration is sought.

*S19 very specific compare to S14.

♥        Sec 20(1)– Concurrent Users

ÐConcurrent in that usage of both marks took place during the time that the oponent’s registration was in force.

ÐIt must happened in the same market for it to be applicable.

è Case : Pirie’s Application

Held : To determine if goods are of the same description, must take into account :

1.       What degree of likelihood is there that confusion will be caused?

2.       Is the choice & use of the identical / similar TM an honest?

3.       How long has the applicant used the TM concurrently with the opponent? Of long usage this will cause difficulties to the applicant if the application was disallowed.

4.       Has evidence been given that there are consumers confused / deceived?  

z  EFFECT OF REGISTRATION

Ì  S34(b) : Effect of registration.

Ì  S34(b) : Duration of registration is 10 years subjected to the right of renewal (S41(1) & (3))

Ì  S30 : Date of registration is referring to date of application for registration.

Ì  S35(1) : Rights given by registration. Monopoly right.

Ì  S82 : No infringement action can be brought to prevent the infringement of an unregistered TM except via passing off.

z  INFRIGNEMENT

Ì  1^st type of Infringement : Sec 38(1)(a) – By using the mark as a TM that is to indicate the trade origin.

Ì  2^nd type of Infringement : Sec 38(1)(b) – By importing a reference to the person entitled to use the mark. Eg = “Batax shoes are more lasting than Bata shoes.”

Ì  3^rd type of Infringement : Sec 39 – By breach of conditions.

1)    Infringement in Sec 38(1)(a) : Elements -

a)      The Df is not the registered proprietor of the TM / registered user.

b)      Uses an identical / nearly resembling TM as that of the registered TM.

c)      Likely to deceive / cause confusion.

d)      In the course of trade.

e)      The mark is used as a trade mark.

z  How to determine whether a mark is similar?

è  Case : Saviller Perfumery

Held : The way to compare between to mark is not by side-by-side comparison.  Imperfect recollection factor must be the one counted on. IR referring to the mark that is remembered through features that strike the eye. (Eg : When you talk about McD, you already have a rough idea and rough imagination on the words & the colour use. This is IR).

z  Imperfect Recollection

è  Case : MI & M Corpn

Held : The test to determine whether 2 marks is resembling each other is :

      i.            Whether a person who sees one mark in the absence of the other TM & in view of his general recollection of what the nature of the other TM was, would be likely to be deceived & think that the TM is the same with the other.

     ii.            Must take into account the sort of people who would buy the goods & the circumstances in which they buy.

è  Case : JS Staedler

Facts : Pf is the registered proprietor of a TM consisting of a get up (apparel / bahagian luar) of the Staedler pencil which was hexagonal in shape with black & yellow thick & thin stripes & the words ‘Steadler Noris’. The Df manufactured pencils which were hexagonal in shape with thick black & yellow stripes & word ‘Nikki’.

Held : The ct held that essential features were the striking black & yellow stripes, not the words ‘Staedler Noris’ or ‘Nikki’. The essential features of the Df’s mark, on an ocular comparison, bore close resemblance with that of the Pf’s mark. Likelihood of confusion.

è  Case : Ayamas Convenience Store

Facts : dPf is the registered proprietor of Ayamas. The Df is the franchise holder of Grandy’s restaurant. Df operates using Ayamas as name of its restaurant.

Held : Pf stores sold a wide range of products diff from the Df’s restaurant. Pf’s stores specialized in raw chicken while the Df’s stores dealt with cooked chicken for consumption on premises. No infringement.

2)    Infringement in Sec 38(1)(b) : ‘Importing a reference’.

è  Case : Bismag v Amblins

Facts : Pf the registered proprietor of the TM ‘Bisurated’ for medicines. The Df is the manufacturer & distributor of various medicines. Df issued advertising circular which contained 2 column. 1 heading there was an entry of ‘Bisurated’ together with the price. Next to it is the 2^nd column & it contained the word ‘Bismuthated’ which were the medicines manufactured by Df. The price quoted was lower than that of ‘Bisurated’ although the ingredients were the same.  

Held : The is infringement by importing reference.

3)    Infringement in Sec 39

♥        When there is a notice upon goods / upon the container of goods given by,

♥        The registered proprietor who at the same time makes a statement prohibiting the doing of an act mentioned in Sec 39(2)(a),

♥        Any person who is the owner of the goods does the act / authorizes it to be done would be said to infringe the TM unless,

♥        (a) the owner acted in good faith without the  knowledge on the notice of the statement, or

♥        (b) he become the owner of the goods with the title derived from another person who had agreed to buy the goods.

♥        Sec 39(2)(a) : The application of the TM after they have suffered alteration to their state, conditions, get up or packing.

z  DEFENCE

Ì  1^st Defence : Sec 37 – Defective title will caused the Pf’s TM not able to be registered.

Ì  2^nd Defence : Sec 40(1)(a) – Honest use of the one’s own name / name of business.

Ì  3^rd Defence : Sec 40(1)(b) – The use in good faith of a description of the character / quality of his goods / services

è  Case : Newton Chambers v Neptune

Held : The used of Izal mark for the Df’s lavatory paper, which was literally lead to the believe that the paper is established by the manufacturers of ‘Izal’.

Ì  4^th Defence : Sec 40(1)(c) – The prior and continuous use.

è  Case : Mouson v Boehm

Facts : Pf is the registered TM ‘The Colonial’ enclosed in a ring & the device of a kangaroo. Since 1874, Df conducted business as a soap manufacturer also with a mark comprising a kangaroo & the word ‘Colonial’ similar to the Pf’s. From the year of 1876-1882, the Df’s manufacturing of soap ceased because production was not practicable. But the Df continued the manufacture from 1882.

Held : There was a continuous use by Df. It would be absurd to hold that he is to lose his mark by not putting more goods in the market when it was glutted.

Ì  5^th Defence : Sec 40(1)(d) – Use of mark on genuine goods.

♥        The purchaser of goods which are produced by the registered proprietor & to which the TM has been attached acquires the absolute ownership of the goods including the right to sell those goods.

è  Case : Revlon v Cripps

Facts : Pf is the parent co. of an international group which manufactures & sells in the US anti-dandruff shampoo under the TM ‘Revlon Flex’. Revlon Inc had a subsidiary in the UK who is the registered proprietor of the Revlon Flex TM & Pf in this case. Pf as the subsidiary is controlled by Revlon Inc. At one time, Df bought from the US market the anti-dandruff shampoo & sold in the UK market at prices which competed with those of the Pf. Pf brought the infringement action on the ground that Pf was the registered proprietor on the Revlon Flex TM in UK & Df could not be allowed to market that shampoo in the UK. Df here is a registered user of the shampoo.

Held : As the TM was used lawfully by the parent co on its shampoo, the Df as the purchaser of the goods can sell them in whatever way he likes. Pf as the subsidiary can’t prevent the sale of the shampoo in the UK though it was manufactured in the US. Once the parent co. consented to the sale of the shampoo to the registered user, he can’t go back from the words.

Ì  6^th Defence : Sec 40(1)(dd) – Use that is allowed by the registered proprietor or register user.

Ì  7^th Defence : Sec 40(1)(e) – The manufacturing of spare parts / accessories.

Ì  8^th Defence : Sec 40(1)(f) – The concurrent usage.

è  Case : Union Marketing

Facts : Registered proprietor of ‘Cheri Lon’ for stockings sought trade description order vs Resp who also use ‘Cheri Lon’ for stockings. This trade mark was originally registered under the Sarawak TMO. IN Sec 6, it is incorporated into Register of TM. By oversight of the registrar, in 1989, Registrar registered the Resp also as TM owner of ‘Cheri Lon’ for stockings.

Held : Ct relied on the Sec 40(1)(f) & granted concurrent right.

z  RECTIFICATION (Refinement / Pembetulan)

♥        Sec 36 : Registration is a prima facie proof of its validity.

♥        4 ways of rectification :

Ì  1^st way : Sec 37 – Conclusive registration 7 years later except for certain situations.

Ì  2^nd way : Sec 43 & 44 – Correction of Register / Alterations of registered TM.

Ì  3^rd Way : Sec 45 – Rectification of register on application by an aggrieved person.

Ì  4^th Way : Sec 46 – non-use of TM.

1.     Sec 37 : Conclusive registration of 7 years later except :

a)    Fraud

è  Case : Sanita Manufacturing

Held : Thai principal. The sole agent in Mlaaysia registered the trade mark as the proprietor without permission of the Thai which lead to the expungement of the fraudulent registration.

b)    Offends vs Sec 14.

è  Case : GE TM

Held : The use of the present tense shows that the date to determine whether a mark offends vs Sec 14 is the time when the expungement proceedings are commenced.

c)    TM was not, at the commencement of the proceedings, distinctive of the goods / services of the registered proprietor.

2.     Sec 45 : This section empowers the ct to rectify the Register on application by an aggrieved person.

è  Case : Pwell’s TM

Held : For a party to be the aggrieved person, he must be  :

      i.            In the same trade as that of the registered proprietor.

     ii.            The registration has limited the legal rights of the applicant such that he could not lawfully carry on his business.

è  Case : Lever Brothers v Sunniwhite

Held : Aggrieved person could also deal with goods of the same description.

z  4 Grounds under Sec 45.

i.      Non insertion in / omission from the Register of any entry.

ii.      Entry made in the Register without sufficient cause.

è  Case : GE TM

Held :

1.       The fact that a mark is entered upon the Register is prima facie evidence of the validity of the original registration & of the right of the registered proprietor to the exclusive use of the mark.

2.       If the mark was likely to cause confusion at the time when it was 1^st registered, it may be expunged from the Register as an ‘Entry made in the Register without sufficient cause.’

3.       If the mark is validly registered during the registration, but event occur later which make the mark to be confusing the public, it may be expunged.

*For the 2^nd & the 3^rd point, court has discretion whether or not to expunge it & as to any conditions, or limitations to be imposed in the event of its being permitted to remain on the register.

iii.      Entry wrongfully remaining in the register.

♥        The section related is section

♥        33(1) : The registration of TM is not directly void just because it is use after the registered date which containing other goods / service’s descriptions.

♥        If it is proven that any of (2)(a) There is well-known / established used of the name / description of the registered TM of goods but not in the same trade as the registered proprietor / user, (b) the name / description are the only article / substance left after being used as patent, (c) well-known used of name / description of the services - happen, (3)(a) would take effect that it will be deemed that the entry is wrongfully remaining on the register.

iv.      Entry or defect in any entry in the register.

3.     Sec 46 : The non-use of the mark.

♥        Aggrieved person may applies for expungement of the un-used mark.

♥        The TM was not registered in good faith to use the mark & the mark was not used at least 1 month from application for expungement.

♥        The TM has been used even after continuous period of 3 years have elapsed in which there had not been ‘good faith’ use of the mark.

♥        ‘Good Faith’ = means genuine , noted that real commercial use on a substantial scale does not mean honest.

z  Sec 18 : Disclaimer (pelucutan)

♥        Sec 18 :

♥        The element that is commonly used in trade / business or is not distinctive.

♥        It can be registered but the right over such element must be disclaimed.

♥        Eg : 7UP – Disclaim upon the use of ‘7’, will get the mark registered, but no right over the no ‘7’.