PLAY TIME: NAVIGATING THE MURKY TRADEMARK MAZE

Let’s say you are an entrepreneur. After years of blood and sweat, you are ready to

launch your product. It’s all smooth sailing until a colleague casually asks you if you

have protected the brand name. Right at that very moment, you freeze. In the

chaotic runup to the product launch, trademark registration somehow into a passive

State.

Not having the wherewithal to connect with professionals, you zoom down on the

name “SPORTII”. This, you think, is apt, as consumers can easily associate the

name with a store (and an e-commerce platform) that sells sports goods and

accessories.

You turn to an AI tool for advice on what is to be done next, following which you

perform a search to determine whether the name “SPORTII” has already been taken

or not. You come across a prior trade mark registration in respect of “SPORTY”. You

are happy because the name that you have chosen is available and you proceed to

file the trade mark application.

In such a scenario, what are the downstream problems that can occur? Let’s delve

into the same.

Hurdle 1: Section 9(1)(a)

The Trade Marks Registry may consider the trade mark to be devoid of distinctive

character, since the trade mark has a direct reference to the character or quality of

the goods or services.

Hurdle 2: Section 9(1)(b)

The Trade Marks Registry may hold that the trade mark designates the intended

purpose of the goods or services.

Hurdle 3: Section 11(1)

This is where the game of phonetics kicks in. While you may think that “SPORTII”

and “SPORTY” are different, when viewed through the lens of the law, the Trade

Marks Registry may hold that the former is deceptively similar to the latter, based on

phonetic similarity. The replacement of a “Y” with an “I”, and the addition of an extra

“I” do not substantially alter the similarity of your trade mark, when compared with

the prior registered trade mark.

Significance of Trade Mark Attorneys

Navigating murky waters requires experienced and wise hands. Our team of trade

mark professionals walk hand in hand with you, throughout the trade mark

registration process and beyond, so that product development and business remain

your only focus. Our work goes far beyond preparing and filing papers. From

identifying classes to ascertaining registrability, and from handling objections to

countering oppositions, our work is far more layered than meets the eye.