Section 5 - Trade Marks Act 1994 - Relative Grounds
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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
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
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Article Published/Sorted/Amended on Scopulus 2011-02-10 14:12:46 in Legal Articles