Presentation on theme: "Descriptive Word Mark - Examination Procedure - Industrial Property Registrations - Malta - Gina Borg Trademark Examiner."— Presentation transcript:
Descriptive Word Mark - Examination Procedure - Industrial Property Registrations - Malta - Gina Borg Trademark Examiner
Descriptive Word Mark The example we are going to use is: Kitchen Wooden Tables Word mark applied for in Classification 20
Descriptive Word Mark When the mark Kitchen Wooden Tables is being examined on Absolute Grounds, it is found to be descripitive in terms of Article 4(1)(c) of the Trademarks Act 2000.
Descriptive Word Mark Art 4. (1)(c) of The Trademarks Act 2000 states: The following shall not be registered as trademarks:
Descriptive Word Mark... trademarks which consist exclusively 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...
Descriptive Word Mark trademarks which consist exclusively of signs or indications which may serve, in trade, to designate: the kind... (wooden), intended purpose... (kitchen tables),
Descriptive Word Mark A communication is sent to the applicant: a. Explaining that the mark cannot be registered in terms of Art. 4(1)(c) of the Trademarks Act 2000, and thus would be refused;
Descriptive Word Mark b. b. However should s/he wish, they may amend the mark by: i. i.changing the words to a distinctive format, or
Descriptive Word Mark ii. 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 Word Mark It should be noted that the Trademark Act 2000, Article 13 (2) states that: The Comptroller may disclaim any right to the exclusive use of any specified element of the trademark.
Descriptive Word 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 Word Mark i. i. If the mark applied for is amended by changing the word mark to a label, which is considered to be distinctive; Example:
Descriptive Word Mark then registration is granted with the condition: The label is registered only as distinctively reproduced.
Descriptive Word Mark ii. 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 Word 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 Word 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 Word 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 Word 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 Word 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.
Descriptive Word Mark Clarifications&Discussion
Other Examples: List of goods and services Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs. Descriptive Word Mark
Other Examples: List of goods and services Class 16: Office supplies; stationery. Descriptive Word Mark OFFICE MATE
Grazzi Ħafna Thank you very much Grazie mille Merci beaucoup Vielen Dank Muchas gracias