Odo Broni and Akosua Serwaa are in trade mark dispute regarding the 2 lamps above. Odo Broni has a registered company known as Bobo Ltd, which manufactures Bobo as above while Akosua Serwaa owns a company, Lamb which manufactures Kanea as represented above. Akosua Serwaa uses Kanea as her trade mark, which she registered in 2012. Odo Broni is seeking to register for a trade mark “Bobo” for her Bobo lamps, and has applied to the Registrar who has published the details of the application in the Trade Mark Bulletin. Akosua Serwaa has contacted you as her lawyer to advise her on the following:
Procedural Requirements for Trade Mark Registration
Under the Trade Marks Act 1994, an applicant must submit a completed application form to the Registrar at the Intellectual Property Office, accompanied by the prescribed fee and a clear representation of the mark. The specification of goods or services must be stated using the Nice Classification system, ensuring precision to avoid objections. The Registrar examines the application for compliance with formal requirements and then searches for conflicting earlier marks (Bently and Sherman, 2014). If no issues arise during examination, the details are published, allowing third parties an opportunity to oppose. This step-by-step process guarantees that only marks meeting statutory criteria proceed to registration.
Likelihood of Registering “Bobo” as a Trade Mark
The applicant’s prospects of securing registration for “Bobo” appear reasonably strong, though not guaranteed. Section 3 of the Trade Marks Act 1994 requires marks to be distinctive and non-descriptive. “Bobo” is arguably an invented word with no obvious meaning in relation to lamps, satisfying the absolute grounds test (Cornish, Llewelyn and Aplin, 2019). Regarding relative grounds, similarity to the earlier mark “Kanea” is low; the signs are visually, phonetically, and conceptually dissimilar despite both covering identical goods. The average consumer would be unlikely to experience confusion, supporting registration unless additional evidence of shared reputation emerges. However, the Registrar retains discretion to refuse if any absolute or relative obstacles surface during examination.
Procedure for Resolving Opposition
Once publication occurs in the Trade Mark Bulletin, Akosua Serwaa has a two-month period (extendable by one month) to file a notice of opposition on Form TM7 (UK Intellectual Property Office, 2023). The grounds must be clearly stated, typically under sections 5(2) or 5(3) of the 1994 Act. The applicant is served with the notice and may file a counter-statement within a prescribed timeframe. Both parties can submit evidence, and the Registrar may request a hearing or decide the matter on the papers. The decision is appealable to the Appointed Person or the High Court, ensuring a structured and fair resolution process (Bently and Sherman, 2014).
Conclusion
In summary, Akosua Serwaa’s advice centres on the formal steps for registration, the probable success of Odo Broni’s application given limited similarity between the marks, and the detailed opposition framework available to her. This enables her to decide whether to challenge the application effectively within the statutory deadlines.
References
- Bently, L. and Sherman, B. (2014) Intellectual Property Law. 4th edn. Oxford: Oxford University Press.
- Cornish, W., Llewelyn, D. and Aplin, T. (2019) Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights. 9th edn. London: Sweet & Maxwell.
- UK Intellectual Property Office (2023) How to oppose a trade mark application. Newport: Intellectual Property Office.
