Law of Intellectual Property Essay Example | Topics and Well Written Essays - 2000 words

Law of Intellectual Property - Essay Example The First step is to carry out a search in the Trade Marks Registry data base at http://www.ipo.gov.uk/tmtext or European database at http://tmview.europa.eu/tmview/welcome.html for possible prior conflicting uses of Desir or similar words already registered. The search results are furnished in the annexure 1. Among the 37 items revealed in the search results were also â€Å"Desir† and similar sounding â€Å"Desire â€Å" and â€Å"Dezir† though under different classes. Out of 45 classes of items, perfume was not found. Class 1 was Chemicals. On further search for perfume, results showed that â€Å"perfume† fell under the Nice class 3. And the similar sounding â€Å"desire† has been registered in class Nice 3. The word â€Å"desir† has been registered under Nice class 30 which is for â€Å"foodstuffs†. The question is whether â€Å"desir† is registrable under the above circumstances. There are as many as five sections in the Trade Ma rks Act 1994 under which a trade mark can be refused to be registered. Relevant section for the present purpose is section 5 which states as follows. Section 5 (1) prohibits registration of a trade mark if an identical trade mark has been already registered as goods or service. Section 5 (2) (a) prohibits registration of a trade mark if a similar trade mark has been already registered. ... Section 5 (4) prohibits registration of a trade mark if it could not be registered by any rule of law such as â€Å"law of passing off†. The last section 6 however provides for registration of an already registered trade mark if the proprietor of the earlier trade mark gives his consent to the registration (Legislation.gov.uk, 1994, p. 11). In view of the above provisions, trade mark in the name of â€Å"Desir† may be refused since the name already falls under food stuffs. A similar or identical trademark can be refused as it would cause confusion and the public are likely to mistake it for food stuff. A perfume being mistaken for foodstuff could result in disastrous consequences. Even if the owner of the existing trade mark consents, the registry may in public interest ask the applicant to make changes in the word â€Å"desir† in order to avoid possible future complications. If at all, the applicant gets the approval of the name, olfactory description of the per fume needs to be clarified. The description sought to be registered is â€Å"spice with a touch of citrus lemon†. In this connection, the case law Eden SARL v Office for Harmonisation in the Internal Market ( Trade Marks and Designs ) (OHIM) (2005) says that it can be an absolute ground for refusal if olfactory description cannot be represented graphically as per article 7 (1) (a) of Regulation (EC) No 40/94. The article states that a trade mark if not visually perceivable should at least be capable of being graphically represented by way of clear, precise, easily accessible, intelligible, ,durable, and self contained images, line, and characters. The olfactory description â€Å"smell of ripe straw berries† of the applicant in the above case not has been