Introduction
Intellectual property may be defined as any type of mind creation that has exclusive rights, which are recognized by the various corresponding fields of law. Intellectual property may be seen as intangible property that a person or an organization is entitled to. Intellectual property rights may include rights pertaining to trademarks, copyrights, industrial design rights, patents and trade secrets. Intangible assets may include the following; inventions, discoveries, words, phrases, designs and symbols (Bainbridge, 2009).
Intellectual property is categorized into two major categories which include industrial intellectual property and copyright. Copyright categories are comprised of literally and artistic works, poems, plays, musical work, films, drawings, photographs, paintings, architectural designs and sculptures. Industrial intellectual property includes patents (inventions), industrial designs, trademarks and geographical indication of source (Greenhalgh & Rogers, 2010).
A registered trademark is that trademark which has been registered with the appropriate trademark office in a particular jurisdiction. It is not a legal obligation for a trademark to be registered. Some of the trademarks are not registered with the appropriate legal office. Registering a trademark has some advantages. They include a notification to the general public about the right of ownership of the trademark, exclusive rights to the use of the mark and a legal conjecture of ownership nationally (Wilson, 2004).
Various countries and states have different legal frameworks and guidelines that determine to what extent a trademark is considered legally owned. Trademark infringement is considered a serious crime in most jurisdictions and the owner of a registered trademark might initiate a legal proceeding if there is a trademark infringement (Micheals, 2002).
This essay is going to critically evaluate the application of trademark law in relation to an application for registration of a trademark.
Grounds for refusal
For a trademark to be considered legal, Burk and Mark (2009) observe that the trademark must be registered under the law. The process of trademark registration is quite involving since it has to be counter checked to ensure that the trademark does not infringe any rights. In the United Kingdom, trademark registration may be declined on various grounds. These grounds are stipulated under section three of the trademark act 1994. The section has various guidelines which exhaustively define situations under which a trademark registration can be refused. Generally a trademark registration may be refused if:
- The application for registration is made in bad faith.
- The trademark resembles one of the protected emblems in the United Kingdom.
- If the purpose of the trademark is to confuse the general public about the characteristics, origin and quality of the products the trademark is identifying.
- If the trademark resembles and is similar to an earlier trademark that has been registered.
- If the trademark contains symbols that are against the generally accepted morals of the society.
The above examples are just a few selected scenarios under which a trademark registration can be refused (Groom & Institute of trademark agents, 1994).
Pyramid shape for chocolate mints
An application to register a trademark can be refused based on the various stipulated guidelines in the trademark act of 1994. The trademark act stipulates that a trademark shall not be registered if the shape of the trademark represents the nature of goods the trademark is associated with. In applying for registration of a pyramid shape for “pointy mints”, the application will be declined since the shape is similar to the existing triangular brand “Toblerone” (Groom & Institute of trademark agents, 1994).
The brand name “pointy mints” can be viewed as representing a chocolate mint that is pyramid shaped. This pyramid shaped brand reflects the characteristics of the goods that the brand should identify. The trademark act of 1994 stipulates that a trademark shall not be registered if the trademark reflects the nature and characteristic of the goods the trademark is supposed to identify. Hence, under this provision of the act, the application might be declined on grounds that the brand reflects the pointed shape of the chocolate mints (Groom & Institute of trademark agents, 1994).
The application for registering this brand will not be accepted since the shape of the brand reflects the shape of the product that the brand is supposed to identify. Also, the application can be declined on the grounds that the created shape might cause confusion among the public and deceive the public. The brand shape is similar to an existing brand of triangular chocolate which might cause confusion among the public. The public might be confused about the origin, nature and source of the two brands in the market (Groom & Institute of trademark agents, 1994).
Also, the application might be declined on grounds that the brand is similar and identical to an earlier trademark “Toblerone”. Section 3 of the trademark act stipulates that a trademark will not be registered if the trademark is identical with an earlier trademark and the goods and services the trademark identifies are identical with the goods and services for which the earlier trademark represents. For example, an application to register a trademark for conical shaped brand of detergents which is similar to a conical package of a well-known bar soap called jamaa might be declined on the same grounds.
Oxford for bicycles
The trademark act recognizes a trademark that has been registered or has provided an application for registration awaiting confirmation. An unregistered trademark is that trademark that has not applied for an application for registration. The UK trademark act 1994 does not recognize unregistered trademark and any reference to a trademark that has not been registered will be considered null and void (Groom & Institute of trademark agents, 1994).
In the case where an organization wants to make an application for the oxford trademark, the application shall be accepted. The unregistered “Oxford” brand is the original trademark but since the trademark is not registered, the right to intellectual property is not recognized. Registration of a trademark provides exclusive ownership and copyright rights to the owners of the trademark. Once a trademark has been registered legally, any infringement to the right of ownership is a crime. For anyone to use the registered trademark, the consent of the legitimate owner must be obtained.
The trademark act stipulates that the registration of a trademark can be declined if there is an earlier trademark application in progress (Bently & Sherman, 2009).
The act defines an earlier trademark as a trademark which has a date of application for registration earlier than the current trademark. In the above case, the original owners of the “oxford” brand, who have been in existence for almost 20 years, might initiate a legal proceeding for copyright infringement. Such an initiation for legal proceedings will be deemed as null and void since the original owners of the “oxford” brand did not register the brand.
For example, an application to register “Rally” brand for motor bikes might be accepted on the same grounds if the trademark resembles a trademark “Rally” that has been in existence for over than 10 years.
The smell of a “Desire” perfume
As earlier defined, a trademark encompasses those trademarks that are associated with color, smell or even sound. Some companies or organizations have certain colors, sounds and even smell associated with their trademarks. In such a case, if the trademark resembles one of the above aspects of another trademark, it is an infringement to ownership rights. Trademarks need to be distinct and if a duplicate of the trademark is to be created, the consent of the owner should be sought (Wilson, 2004).
In the above scenario, if an application has to be made regarding the registration of the trademark, the application will be declined. The trademark act of 1994 clearly states the various scenarios under which the registration of a trademark might be declined. One such condition is that a trademark will not be registered if the trademark might cause confusion among the public. If the nature of the trademark is inclined towards deceiving the public about the origin and quality of the product, then an application to register the trademark will be rejected (Groom & Institute of trademark agents, 1994).
From the above example, we see that the public defines the smell of the “Desire” perfume as being similar to that of vanilla scent with only a little bit of spice added. This move can cause confusion among the public since most of them will not be in apposition to distinguish the scent of the perfume from vanilla. People might be tempted to feel that the product is made from vanilla yet in the real sense it is not.
For example, an application to register the “lovely” perfume with the same scent as a well-known “Geisha Soap” will be declined on the same grounds.
The use of unusual metallic shade
A trademark, as earlier defined, is a unique symbol or sign that can be used by a person or an organization to uniquely identify its services and products. Trademarks should be unique and should not replicate any other existing trademark (Groom & Institute of trademark agents, 1994).
In the application of the use of an unusual metallic shade as a trademark, the registration will be accepted. The term unusual can be defined as something which is strange. Not all things that are strange are trademarks and not all trademarks are strange. Trademarks need to be unique in their designs. Uniqueness and strangeness are two different concepts and the use of a strange product by a company does not automatically create the strange material in a trademark.
For example, a strange metallic shade might refer to a metallic shade that can be folded. The strange aspect of the metallic shade is that it can be folded unlike other metallic materials which cannot be folded. The above strange aspect does not automatically guarantee that the strange metallic shade will be the trademark for the organization. The trademark act defines a trademark as any sign which is capable of being represented graphically which is also capable of distinguishing the services and goods offered by one undertaking from those of the other undertakings (Groom & Institute of trademark agents, 1994).
From the above definitions, we realize that the use of unusual metallic shade by Rawntree Ltd does not give the company full ownership to use the metallic shade as a trademark. In order for the company to claim intellectual property ownership to the use of the metallic shade, the company should register the trademark.
The trademark should also be in a position to uniquely identify the products the company is providing. If an application for registration of the metallic shade is made by a different undertaking, the application is going to be accepted. The application will be accepted on the grounds that there exist no such registered trademark and no one can claim to own the trademark. This is because the continual use of a particular product, color or use of a specific sound does not guarantee that it is going to be a trademark (Groom & Institute of trademark agents, 1994).
For example, an application to register an unusual plastic material that glows when subjected to darkness will be accepted on the same grounds.
Conclusion
For any individual or organization to claim ownership of intellectual properly, they must have legal recognition. Legal recognition can be obtained through registration of the trademark. Intellectual property is a creation of the mind and it is hard to establish whether individuals or organizations have full ownership.
The process of trademark registration is quite intricate. The process involves checking whether the trademark violates any of the provisions provided in section three of the trademark act 1994. If the trademark violates any of the stipulated provisions, it is considered as an infringement and will not be registered. An infringement is a crime and the people caught might be prosecuted. If the trademarks does not violate any of the provisions indicated in the trademark act, the trademark will be registered and the owners given exclusive ownership rights.
Reference List
Bainbridge, D., 2009. Intellectual property. Harlow: Pearson Longman.
Bently, L. & Sherman, B., 2009. Intellectual property law. Oxford: Oxford University Press.
Burk, D., and Mark, L., 2009. The Patent Crisis and How the Courts Can Solve It. Chicago: University of Chicago Press.
Greenhalgh, C. & Rogers M., 2010. Innovation, Intellectual Property, and Economic Growth. New Jersey: Princeton University Press.
Groom, J. & Institute of Trademark Agents., 1994. UK Trade Marks Act 1994: a practical guide. Harlow: Pearson Longman.
Micheals, A., 2002. A practical guide to trade mark law. London: Sweet & Maxwell.
Wilson, L., 2004. The trademark guide: a friendly handbook to protecting and profiting from trademarks. New York: Skyhorse Publishing Inc.