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Section 5 - Trade Marks Act 1994 - Relative Grounds


Lawdit Solicitors - Expert Author

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9 February 2011

When an applicant wishes to apply for a trade mark, it is necessary to consider any relative grounds for refusal as, upon publication of the application, the owner of an earlier registered mark may object to the registration on the grounds that the proposed mark is confusingly similar to theirs and thus, would cause confusion in the marketplace.

Ultimately, the prevention of too many similar products in the same marketplace is fundamental in order to protect the average consumer from confusion and given the ever increasing trade industry, it is becoming more and more

challenging to choose a mark that passes this originality test.

The 'relative grounds for refusal' are laid down in section 5 of the Trade Marks Act 1994 and fundamentally sub-sections 1 and 2 cover situations where the application is to register a mark that is similar or identical to an earlier registered trade mark and for goods or services that are similar or identical to those for which the earlier mark is registered.

Section 5(3) of the Trade Marks Act 1994 also provides that an earlier mark can be a relative ground to refusal for a trade mark application providing that there is either a) identity of marks and similarity of goods, or b) similarity of marks and similarity of goods.

Sub-section 4 covers situations where the earlier mark is not registered, and so is relevant to claims of earlier rights, namely passing off claims, or copyright or design claims. And sub-section 5 states that the owner of the earlier right or registered mark may consent.

Fundamentally, there has to exist a 'likelihood of confusion' to which has to be balanced against the similarity of the service against the similarity of the marks taking into consideration the perception of the average consumer within the given marketplace.

In assessing the confusing similarity of the marks, a global approach has to be taken; having regard to various factors such as the recognition of the trade mark in the market, the complexity of the goods and services, the inherent distinctive qualities of the earlier mark and the association that can be made between the registered trade mark and the sign.

Lawdit Solicitors is a commercial firm of solicitors who specialise in IP law.

About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.

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Article Published/Sorted/Amended on Scopulus 2011-02-10 14:12:46 in Legal Articles

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