Securing the exclusive use of a trademark : a comparative study

Abstract

This thesis is about securing the exclusive use of a trademark by registration. A trademark is secured automatically as soon as its proprietor starts using it. However, the trademark is secured so as to give the proprietor the exclusive use of his trademark only by registration. A registered trademark is a property right obtained by the registration of the trademark under the Trademarks Act 2000. The proprietor of a registered trademark has exclusive rights in the trademark. However, before filing an application for registration of a trademark the proprietor must make sure that the Industrial Property Office will not refuse to register the trademark on any of the grounds laid down in the Trademarks Act, namely the absolute grounds for refusal of registration of a trademark laid down in Section 4 of the Trademarks Act 2000 and the relative grounds for refusal of registration of a trademark laid down in Section 6 of the Trademarks Act 2000. Since the Trademarks Act 2000 has only come into force in January 2001, no application for registration of a trademark has as yet been officially accepted or refused, so I had to refer to UK case law. This was possible because the Trademarks Act 2000 is basically a mirror of the UK Trademarks Act 1994. Therefore, it is quite probable that our Courts will follow the approach followed by the UK Courts. I have even referred to some EU case law since both the Trademarks Act 2000 and the UK Trademarks Act 1994 are very similar to the EU Directive to Approximate the Laws of the Member States Relating to Trademarks 1988. I have tried to point out some of the important improvements brought by the introduction of the Trademarks Act 2000 that lays down quiet clearly the general principles relating to trademarks.