Trade Marks Act 1994 and Registration of Shapes Essay

Introduction

The essay is a critical analysis of when a shape qualifies to be registered as a trademark under the Trade Marks Act 1994. In addition, the essay brings forth the special problems that usually arise from the registration of shapes as trademarks. It is worth noting that in this competitive business world, individuals, small as well as bigger organizations are trying to cut themselves an edge in the market with the quest of maintaining their customers and wooing those of their competitors¹. There are indeed various ways of doing this but the issue of trademark has historically played a bigger role.

Trademark refers to as an indicator, sign, shape, symbol, word, logo, phrase, image and or a combination of all these things that make one person, company as well as other entities that are legally recognized to associate with service(s) and product(s) they offer r to end-users². Trademarks have been used to help differentiate goods and services from the various legally identified entities.

The 1994 Trade Marks Act is a replacement for the Trade Marks Act of 1938. It is a law that governs trademarks issues in the UK and Isle of Man. The Act puts into action the First Trade Mark Directives of 1988; it also makes Madrid Protocol for International Registration of Marks an effect. The act is in four parts and three schedules³. It is also important to note that registration of trademark I a way of protecting intellectual property rights, this plays a major role in ensuring that competition especially in the business world and for the profit-oriented organizations and individuals are fair⁴.

Part and Schedules of the Act

As mentioned elsewhere in this paper, there are four parts and five schedules in the act. Part one, which constitutes fifty sections absolutely; deal with trademarks that are registered. It entails what a trademark is, the basis for refusing to register a shape, proceeding for infringement, trademarks that are registered being termed as property, licensing, how to apply in registering a mark, the expiry time of a registered mark/shape, surrender, revocation, collective, certification and invalidity.

Part two addresses the issues that relate to community trademarks, Madrid Protocol as well as the provisions of the Paris convention that I associated with trademarks. The third part of the Act carters for the register, his/her powers, tasks duties, and responsibilities. Additionally, it provides for Trade Marks Registry, agents, border control of infringement of goods and articles as well as offenses and forfeiture of contrabands products.

The last part is interpretation parts as well as a number of miscellaneous and other general provisions. It is worth mentioning that the schedules address issues relating to collective marks, certification marks and transitional issues, consequential and repeals and revocations in that order.

Registration of shapes

It is worth noting from the onset that the UK Trade Marks Act 1994, which defines trademark as; “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another undertaking⁵. This thus does not specifically include or exclude shapes thus shape will qualify to be registered as a trademark when it meets the entire requirement that a sign or symbol to be used as a trademark must meet⁶.

Under the act, it is worth noting that a shape can qualify for registration when that shape has been used to acquire distinctive, hence a distinctive mark. This can be attained when the shape has been used and to prove that indeed it has attained the desired distinctiveness, the organization’s budget for advertisement or volumes sales is used to ascertain this⁷.

In addition, a symbol qualifies for registration under the UK Trade Marks Act 194 when the shape itself is not suggestive; this is to say that not ‘leading’ or ‘enticing’ to consumers A shape also qualifies to be registered provided it does bring the possibility or probability of making consumers be confused. This is very significant as will ensure that customers are not confused when it comes to identifying who made and sells hat products and or services.

Lastly, shapes do quality to be registered as a trademark under the 19994 UK Act when it will not cheat end-users concerning the quality (ies) of a service and more so that of a product. Once a shape is registered, the person applying for registration has the right to continue using the trademark and can allow steps to be taken against an individual for infringement as it concerns the trademark⁸.

Ground for refusal

It is worth noting that although the act does provide for requirements that must be met before a shape is registered as a trademark, it also lays ground from where an application to register a shape can be refused. These circumstances include;

When the shape does not meet the requirements in section 1 (1), (definition of what is a trademark); if it is devoid of any distinctive characteristic, if the shape has exclusively signs or indicators that serve in trade to designate the kind, quality, quantity, value, or intended purpose (being suggestive). After having exclusive signs or indicators that have become customary; the norm in the present language or in the bonafide, and established practices of any sort of trade⁹.

According to The UK Trade Mark Act 1994, 2010 shapes can be denied registration it has some attributes of the product or services it wants to provide or gives value to the services and product. Similarly, the act stipulates clearly that another ground that can lead to a shape not to be registered is in situations whereby the law of the land does not allow it, and definition of ‘good’ and bad’ forbid it. Additionally, other sorts of policies or provisions by the UK government do block the registration of some shapes, this has been done by the provision on Community Law among others¹⁰.

Other grounds refusal of registration of a trademark can arise if it contains the national flag of the United Kingdom (Wales, England Scotland, Isle of Man and North Ireland), has a representation of a royal crown, a representation of the queen or any member of the royal family. According to the provision of the active section 1 subsection 5 (1), a shape will be denied registration if it is identical with previously registered trademark as well as the products and services in which a previous trademark is protected by law¹¹.

It is worth noting here that a shape will qualify to be registered as a trademark if it indeed qualifies from being refused on the grounds stipulated in this discussion.

Problems arising because of registering shapes

It is important to remember that when shapes are registered as trademarks, there are a number of special problems that arise. These problems have proved to be of challenge more so in courtrooms. One common problem that arises after registering a shape is court challenges that a third party seeks to prove that indeed the registered shape is his intellectual property right. Additionally, it denies other individuals who had the same mind registering a given shape¹².

On the same note, if a shape is registered, the issue of infringement can be easily come to play especially in cases where an individual has used such a shape as his or her trademark for a longer period with registering it. In addition infringement of registered trademark will arise, limits on effect of registered trademark is another kind of special problem that ill a rise when the shape is registered as a trademark, there are instances that exhaustion of rights conferred a registered trademark and lastly the issue of registration subject to, limitations and disclaimer will arise once a shape is registered as a trademark¹³.

It is important to note that all these special problems come into play because as provided in the Act, the one who pushed for registration of a given shape is given by law full control and rights in the registered shape that is infringed by using it without his/her consent.

Conclusion

From the review of the circumstances that lead to shape qualify to be registered as a trademark as well as the special problems that arise as a result of the registration of shapes, it is apparent that something more needs to be done to ensure that the issues are adequately dealt with. Trademark is an indicator, sign, shape, symbol, word, logo, phrase, image and or a combination of all these things that make one person, company as well as other entities that are legally recognized to associate with service(s) and product(s) they offer r to end-users.

It is evident that for a shape to qualify to be registered it is also established that a trademark as a trademark, it must have proved beyond any reasonable doubt that it has acquired distinctiveness, similarly if it will not make customers confused on who manufactured what, it not being suggestive and not being deceptive warrants registration. The problems that will arise when a shape is registered mostly include legal battles. The Trade Mark Act 1994 has four parts and distinct five sections.

There are grounds laid from where an application of a trademark can be denied. It is thus worth having in mind that for a shape to quality to be registered thus as a trademark, then it has to not fall under any of the categories for refusal. Special problems that arise when a shape is registered as a trademark; are an infringement of registered trademark will arise, limits on effect of registered trademark is a another kind of special problem that ill a rise when the shape is registered as a trademark, there are instances that exhaustion of rights conferred a registered trademark and lastly the issue of registration subject to, limitations and disclaimer will arise once a shape is registered as a trademark¹⁴.

References

Bainbridge, David (2006) Intellectual Property. London: Longman. Carty, Registered Trade Marks and Permissible Comparative Advertising, EIPR 294.

Hollie, Jones (2009). Trade Mark Law: Absolute Grounds for Refusal. 21(2), Pp 1-12.

International Trademark Association, A Report on the Protection of Sound Trademarks, 1997, New York, Pp 3 -11.

Keeling,Victor (2004) Intellectual property rights in EU law, Oxford University Press.

Kirkpatrick, Walter (2005) Likelihood of confusion in trademark law. London: Longman.

Lambert, Jane (1994) Trade Marks: Trade Marks Act. Pp 2-21.

MacQueen, Hector (2006) Contemporary Intellectual Property: Law and Policy. Oxford University: OUP Oxford.

Sabel vs. Puma AG and Rudolf Dassler Sport [1998] ETMR 1.

Spence, Ann (2001) Section 10 of the Trade Marks Act 1994: Is there really a logical lapse, [2001] EIPR 423.

The Patent Office, South Wales, Applying for a Community Trade Mark, 2^nd Edition, 2002.

The Patent Office, South Wales, Applying for an International Trade Mark, 2^nd

The UK Trade Mark Act 1994. Web.

Toshiba Europe GmbH v Katun Germany [2001] ECR 1-7945, [2002] All ER 325.

Footnotes

1. Hollie, Jones (2009). Trade Mark Law: Absolute Grounds for Refusal. 21(2), Pp 1-12 International Trademark Association, A Report on the Protection of Sound Trademarks, 1997, New York, Pp 3 -11.
2. Bainbridge, David (2006) Intellectual Property. London: Longman. Carty, Registered Trade Marks and Permissible Comparative Advertising, [2002] EIPR 294
3. Kirkpatrick, Walter (2005) Likelihood of confusion in trademark law. London: Longman. Lambert, Jane (1994) Trade Marks: Trade Marks Act. Pp 2-21.
4. The UK Trade Mark Act 1994. Web.
5. International Trademark Association, A Report on the Protection of Sound Trademarks, 1997, New York, Pp 3 -11.
6. Toshiba Europe GmbH v Katun Germany [2001] ECR 1-7945, [2002] All ER 325.
7. Sabel vs. Puma AG and Rudolf Dassler Sport [1998] ETMR 1.
8. MacQueen, Hector (2006) Contemporary Intellectual Property: Law and Policy. Oxford University: OUP Oxford.
9. Keeling,Victor (2004) Intellectual property rights in EU law, Oxford University Press.
10. Lambert, Jane (1994) Trade Marks: Trade Marks Act 1994. Pp 2-21.
11. The Patent Office, South Wales, Applying for an International Trade Mark.
12. The UK Trade Mark Act 1994. Web.
13. Carty, Registered Trade Marks and Permissible Comparative Advertising, [2002] EIPR 294.
14. Spence, Ann (2001) Section 10 of the Trade Marks Act 1994: Is there really a logical lapse, EIPR 423.