You are a trainee in a law firm specialising in intellectual property law. Your senior asks you to report on a request from two clients regarding a trade mark that they wish to register for their business. You will need to examine their proposed trade mark, and provide a recommendation to them regarding whether you think his trade mark would be registrable or not. In order to do this, you will need to address several points (listed below) in a report.

Your clients wish to register this trade mark for a subscription service they are offering enabling subscribers to create an 'a la carte' television schedule for themselves by choosing their favourite shows and programmes originally created and broadcast by a variety of television companies.   (Do not worry about any possible breach of copyright by your clients.  You can assume they have licence arrangements in place with the original broadcasters of these shows/programmes).

1. examine the rules regarding absolute grounds for refusal, and decide whether any of them are applicable here
2. decide which class or classes in the trade marks register would be most applicable to your client's trade mark
3. conduct a thorough search of the database to look for the possibilities of conflicting trade marks already registered. In order to do this, ensure that you have taken into account the following:
4. any trade marks in the same class as the one you wish to register this trade mark in (see http://www.ipo.gov.uk/types/tm/t-applying/t-class.htm for the list of classes)
5. any trade marks in similar classes to the one you wish to register this trade mark in (see http://www.ipo.gov.uk/t-class-cross-list.htm for a list of classes the IPO consider to be 'similar')
6. any trade marks which use a similar device (picture, design, etc) to yours but in other classes
7. the names of any competing companies in the same class as the one you are wishing to register in
8. if there is a conflict, explain what the problem is, and which part of the relative grounds for refusal is causing the problem, e.g.
   1. Identical mark, identical goods
   2. Identical mark, similar goods, likelihood of confusion
   3. Similar mark, identical/similar goods, likelihood of confusion
   4. Identical/similar mark, with a reputation

All of the above should be considered along with an explanation of relevant law.

1. This will take the form of a report based upon a search of the trade marks database. You will be assessed on the following criteria: 
2. Demonstrate the practical skill of formulating a strategy for searching the trade marks database, then executing it
3. Identification of the rules governing registration of trade marks, including relative and absolute grounds for refusal of a mark
4. Application of these rules to a factual scenario, in order to resolve a practical problem
5. The ability to draft an appropriate report advising the client in the scenario regarding the potential registration of their trade mark

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Answer rating: 100% (QA)

Trade Mark Registration Report To Clients Names From Your Name Subject Evaluation of Proposed Trade Mark for Registration Dear Clients Names I have co... View the full answer