All I Want For Christmas Is A Trade Mark
All I want for Christmas is a Trade Mark
Dareem Scipio*
Mariah Carey has just failed in her attempt to trademark the phrase “Queen of Christmas”. Whattttt... isn't she…the Queen of Christmas!? Well, she might be the undoubted Queen for several persons but not for fellow singer Elizabeth Chan, who opposed Carey’s application to trademark the phrase.[1] This situation provides an excellent example of the preliminary steps that must take place before a trademark can officially be registered. The preliminary steps in registering marks are almost universal so although Carey’s application would have taken place in the United States, the learning can be applied elsewhere including of course in the Caribbean. So, what are these essential steps?
The first step towards the registration of any mark is the making of an application with the relevant office. In Trinidad and Tobago, this is outlined in section 5(1) of the Trade Mark 2015 which states that an application must be made in the prescribed manner to the Comptroller of the Intellectual Property Office. [2] Assuming that all particulars have been satisfied the next main step is to see whether there any grounds for refusal of registration. This step is very important as it provides an avenue by which any application can be challenged.
Essentially, there are two main categories of grounds for the refusal of trademarks. The first is the absolute grounds and these are essentially what the name says. Where any factor that falls under this category is present, that will act as an automatic bar to the registration of the mark without question. Examples of grounds falling under the absolute category include, where the mark seeking to be registered is devoid of any distinctive character and where the mark is contrary to public policy and public morality.[3] These examples are not exhaustive and an examination of the relevant Trade Mark Acts in the Caribbean and elsewhere will reveal other absolute grounds on which a mark may be refused.
The second category is what is referred to as relative grounds for refusal. Relative grounds essentially prevent the registration of marks that are identically similar to earlier marks for goods and services of the same kind of which the earlier mark protects.[4] All grounds under this category flow from this conflict that may arise between two contrasting marks that are either identical or similar in nature. Like the absolute grounds, an examination of the relevant Trade Mark Acts will reveal other relative grounds on which a mark may be refused.
Let us assume that an application meets all the requirements outlined above so far and the application is accepted. Does this acceptance lead to automatic registration and the conferment of rights on the mark owner? The answer to this question is no. According to section 14(1) the Trade Mark Act, after an application is accepted it must then be published for the public record and any person who so wishes may write to the Comptroller advancing an objection to the registration.[5] Interestingly, this is the ground on which Carey’s application met a stumbling block and ultimately failed. Importantly, an objection to a mark does not automatically lead to it being denied registration as the final determination rest with the Comptroller. In Carey’s case it was reported that though USPTO invited her to make submissions in response to the objection, she did not.[6]
Chan is quoted as saying “No one person should hold onto anything around Christmas or monopolise it in a way that Carey seeks to in perpetuity”.[7] Her attorneys have referred to Carey’s attempt to register the mark as “a classic case of trademark bullying”.[8] Thus, while the actual ground on which the objection was based is unknown, based on the comments of both Chan and her lawyers it seems very likely that there may have been some public policy element involved. Indeed, the opposition was not totally unjustified. Although registration of the mark could not have prevented the descriptive use of the phrase “Queen of Christmas, it would have given Carey a wide scope of protection as the mark was to apply beyond music to apparel and other goods. Interestingly, even the usual territoriality argument would have been a weak point considering the popularity of Carey and the possibility of the brand becoming renowned globally. Undoubtedly, advancing a strong defence to the objection would have proven to be a great challenge for Carey which probably explains why no response was made to the objection.
In sum, one must know that the process in registering a trade mark involves several different steps including being subject to public inspection and scrutiny. It is essential therefore that when filing for registration you ensure that your mark is objection-proof and can withstand any public scrutiny. While you cannot prevent the raising of any objections to your mark, you must be able to ensure that you can properly respond and/or defend any such objections.
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