Trademarks
Trademarks constitute any sign capable of being represented graphically, and which distinguish the goods and services of one undertaking from those of another. A trademark may consist of words, figurative elements, letters, numerals or the shape of goods or their packaging.
By registering a trademark, the proprietor acquires a property right on the mark and thus benefits from specific remedies against unauthorised use. The proprietor of a registered trademark has exclusive rights on the mark. No unauthorised third party may:
- in the course of trade, use a sign which is identical with or similar to the trademark in relation to goods or services which are identical with or similar to those for which it is registered; and there is the likelihood of confusion on the part of the public, including the likelihood of association with the trademark;
- in the course of trade, use a sign which is identical with or similar to the trademark in relation to goods or services which are not similar to those for which the trademark is registered, but the trademark has a reputation in its place of registration and such use takes unfair advantage of or is detrimental to the distinctive character or the repute of the trademark.
When registering a trademark in respect of different goods and services, the applicant must make a different application for each category. Goods and services are classified according to the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement.
However, an application for trademark registration is refused if the mark: –
- lacks distinctive character;
- is identical with or similar to an earlier trademark and the goods or services for which the trademark is applied for are identical with or similar to the goods or services for which the earlier trademark is protected;
- is identical with or similar to an earlier trademark, and although the goods or services are not similar to those in the earlier trademark, yet the registration would take unfair advantage of the distinctive character or repute of the earlier mark;
- is made up entirely of signs or indications which may serve, in trade, to designate the kind, quality, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
- consists entirely of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade
- its use is liable to be prevented by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade or by virtue of an earlier right.
However, the registration of a trademark is not refused, if it is shown that before the date of application for registration, the trademark had acquired a distinctive character through use.
A trademark may also not be registered if it consists exclusively of the shape which results from the nature of the goods themselves and the shape which gives substantial value to the goods. It is also not registered if:
- it is contrary to public policy or morality;
- it is capable of deceiving the public as to the nature, quality or geographical origin of the goods or services;
- its use is prohibited by any enactment or rule of law;
- it consists of/or contains of any signs, arms, armorial bearings on flags; and
- it is made in bad faith.
On the other hand, an application for a trademark is not refused where the proprietor of the earlier mark or right consents to the registration of the application.
When a trademark is registered, the Comptroller publishes the registration and issues a certificate of registration to the applicant.
A trademark is registered for ten (10) years and may subsequently be renewed for further periods of ten (10) years.