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TRADE MARKS ACT 1995 No. 119 of 1995 - SECT 41

Trade mark not distinguishing applicant's goods or services
41. (1) For the purposes of this section, the use of a trade mark by a
predecessor in title of an applicant for the registration of the trade mark is
taken to be a use of the trade mark by the applicant. Note 1: For applicant
and predecessor in title see section 6. Note 2: If a predecessor in title had
authorised another person to use the trade mark, any authorised use of the
trade mark by the other person is taken to be a use of the trade mark by the
predecessor in title (see subsection 7(3) and section 8).

(2) An application for the registration of a trade mark must be rejected if
the trade mark is not capable of distinguishing the applicant's goods or
services in respect of which the trade mark is sought to be registered
(designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.

(3) In deciding the question whether or not a trade mark is capable of
distinguishing the designated goods or services from the goods or services of
other persons, the Registrar must first take into account the extent to which
the trade mark is inherently adapted to distinguish the designated goods or
services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the
following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently
adapted to distinguish the designated goods or services from the goods or
services of other persons but is unable to decide, on that basis alone, that
the trade mark is capable of so distinguishing the designated goods or
services:

   (a)  the Registrar is to consider whether, because of the combined effect
        of the following:

        (i)    the extent to which the trade mark is inherently adapted to
               distinguish the designated goods or services;

        (ii)   the use, or intended use, of the trade mark by the applicant;

        (iii)  any other circumstances; the trade mark does or will
               distinguish the designated goods or services as being those of
               the applicant; and

   (b)  if the Registrar is then satisfied that the trade mark does or will so
        distinguish the designated goods or services-the trade mark is taken
        to be capable of distinguishing the applicant's goods or services from
        the goods or services of other persons; and

   (c)  if the Registrar is not satisfied that the trade mark does or will so
        distinguish the designated goods or services-the trade mark is taken
        not to be capable of distinguishing the applicant's goods or services
        from the goods or services of other persons. Note 1: For goods of a
        person and services of a person see section 6. Note 2: Use of a trade
        mark by a predecessor in title of an applicant and an authorised use
        of a trade mark by another person are each taken to be use of the
        trade mark by the applicant (see subsections (1) and 7(3) and section
        8).

(6) If the Registrar finds that the trade mark is not inherently adapted to
distinguish the designated goods or services from the goods or services of
other persons, the following provisions apply:

   (a)  if the applicant establishes that, because of the extent to which the
        applicant has used the trade mark before the filing date in respect of
        the application, it does distinguish the designated goods or services
        as being those of the applicant-the trade mark is taken to be capable
        of distinguishing the designated goods or services from the goods or
        services of other persons;

   (b)  in any other case-the trade mark is taken not to be capable of
        distinguishing the designated goods or services from the goods or
        services of other persons. Note 1: Trade marks that are not inherently
        adapted to distinguish goods or services are mostly trade marks that
        consist wholly of a sign that is ordinarily used to indicate:

   (a)  the kind, quality, quantity, intended purpose, value, geographical
        origin, or some other characteristic, of goods or services; or

   (b)  the time of production of goods or of the rendering of services. Note
        2: Use of a trade mark by a predecessor in title of an applicant and
        an authorised use of a trade mark by another person are each taken to
        be use of the trade mark by the applicant (see subsections (1) and
        7(3) and section 8). 


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