descriptive word mark - examination procedure - industrial property registrations - malta - gina...
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Descriptive Descriptive WordWord Mark Mark- Examination Procedure -- Examination Procedure -
Industrial Property Registrations Industrial Property Registrations - Malta -- Malta -
Gina BorgGina BorgTrademark ExaminerTrademark Examiner
Descriptive Descriptive WordWord Mark Mark
The example we are going to use is:The example we are going to use is:
Kitchen Wooden TablesKitchen Wooden Tables
Word mark Word mark
applied for in Classification 20applied for in Classification 20
Descriptive Descriptive WordWord Mark Mark
When the mark When the mark
Kitchen Wooden TablesKitchen Wooden Tables
is being examined on Absolute Grounds,is being examined on Absolute Grounds,
it is found to be descripitive in terms of it is found to be descripitive in terms of
Article 4(1)(c) of the Trademarks Act 2000.Article 4(1)(c) of the Trademarks Act 2000.
Descriptive Descriptive WordWord Mark Mark
Art 4. Art 4. (1)((1)(cc)) of of The Trademarks Act 2000 The Trademarks Act 2000
states:states:
The following shall not be registered as The following shall not be registered as
trademarks:trademarks:
Descriptive Descriptive WordWord Mark Mark
... ... trademarks which consist exclusively of trademarks which consist exclusively of
signs or indications which may serve, in signs or indications which may serve, in
trade, to designate the kind, quality, trade, to designate the kind, quality,
intended purpose, value, geographical intended purpose, value, geographical
origin, the time of production of goods or of origin, the time of production of goods or of
rendering of services, or other rendering of services, or other
characteristics of goods or servicescharacteristics of goods or services ... ...
Descriptive Descriptive WordWord Mark Mark
trademarks which consist trademarks which consist exclusivelyexclusively of of
signs or indications which may serve, in signs or indications which may serve, in
trade, to designatetrade, to designate::
the the kind kind ... ... (wooden)(wooden),,
intended purposeintended purpose ... ... (kitchen tables)(kitchen tables), ,
Descriptive Descriptive WordWord Mark Mark
A communication is sent to the applicant:A communication is sent to the applicant:
a.a. Explaining that the mark cannot be Explaining that the mark cannot be
registered in terms of Art. 4(1)(c) of the registered in terms of Art. 4(1)(c) of the
Trademarks Act 2000, and thus would be Trademarks Act 2000, and thus would be
refused;refused;
Descriptive Descriptive WordWord Mark Mark
b. However should s/he wish, they may
amend the mark by:
i. changing the words to a distinctive
format, or
Descriptive Descriptive WordWord Mark Mark
ii. adding a registerable element to the mark
applied for, which could be a non-
descriptive word or a distinctive element
or feature.
This amendment must be effected within
90 working days.
Descriptive Descriptive WordWord Mark Mark
It should be noted that the Trademark Act It should be noted that the Trademark Act
2000, Article 13 (2) states that:2000, Article 13 (2) states that:
The Comptroller may disclaim any right to
the exclusive use of any specified element
of the trademark.
Descriptive Descriptive WordWord Mark Mark
Thus, because of this;
the applicant is also informed that should the
amendment be made, the mark would be
registered with a condition as follows:
Descriptive Descriptive WordWord Mark Mark
i. If the mark applied for is amended by
changing the word mark to a label, which
is considered to be distinctive;
Example:
Descriptive Descriptive WordWord Mark Mark
then registration is granted with the
condition:
“The label is registered only as distinctively
reproduced.”
Descriptive Descriptive WordWord Mark Mark
ii. If the mark applied for is amended by
adding a registerable word, or a
registerable feature or element;
Example:
Partridge Kitchen Wooden Tables
or
Descriptive Descriptive WordWord Mark Mark
Kitchen Wooden Tables
then registration is granted with the
condition:
“Registration gives no right to the exclusive
use of the words ‘Kitchen’, ‘Wooden’, and
‘Tables’.”
Descriptive Descriptive WordWord Mark Mark
If the requested amendment is not received
within the specified time,
the application in question is refused as per
Articles 4(1)(c) and 35(3)
of the Trademarks Act 2000.
Descriptive Descriptive WordWord Mark Mark
Article 35(3) of the Trademarks Act 2000 states:
If the applicant fails to satisfy the Comptroller
that those requirements are met, or to amend
the application so as to meet them, or fails to
respond before the end of the specified period,
the Comptroller shall refuse the application.
Descriptive Descriptive WordWord Mark Mark
If the requested amendment is received
within the specified time, the added element
in the mark is examined on absolute and
relative grounds.
Descriptive Descriptive WordWord Mark Mark
If the amended mark passes the Absolute
and Relative grounds examination, then the
Notification of Registration with the relevant
condition as indicated earlier is issued.
Other Examples:Other Examples:
List of goods and servicesList of goods and services
Class 36:Class 36:
Insurance; Financial affairs; Monetary affairs; Insurance; Financial affairs; Monetary affairs; Real estate affairs.Real estate affairs.
Descriptive Descriptive WordWord Mark Mark
Other Examples:Other Examples:
List of goods and servicesList of goods and services
Class 16:Class 16:
Office supplies; stationery.Office supplies; stationery.
Descriptive Descriptive WordWord Mark Mark
OFFICE MATEOFFICE MATE
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