TRADEMARKS

WHAT IS A TRADEMARK

A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a particular person or a specific enterprise.[1] A trademark manifests in itself a strong association between goods/services and their producers/providers.

WHAT DOES NOT CONSTITUTE A TRADEMARK

A valid trademark must not have the following features:

  1.  It should not be deceptively similar to any other existing mark
  2. It should not be a descriptive of the goods. A remote reference is  sometimes allowed.
  3. It should not be a word that defines the nature of the product
  4. It should not be the name or the surname of a person
  5. It should not be a geographical name

HISTORY AND EVOLUTION OF TRADEMARKS

The basic idea of trademarks has grown for as long as the civilization and cannot be traced back to any single point in time. Many artefacts from Greek and Roman ruins have displayed what are known as potters marks, which were used in those time to identify who (or where) the pot came from, and craftsmen of all kinds would mark their created goods.[2]

While trademark cases were being brought around the world prior to the year 1803, it wasn’t until then that oldest trademark legislation was passed in France.[3]  France’s “Factory, Manufacture and Workplace Act” enacted in the year 1803 is internationally noted for establishing a system which made it a crime to pass off another’s seal as one’s own.[4]

BASIC FUNCTIONS OF A TRADEMARK

The usage of a trademark as a distinctive sign on goods/services serves the following basic purposes:

  1. Indicate the origin of goods;
  2. Help in distinguishing one merchant’s goods/services from those of another;
  3. Protect consumers from confusion with respect to the origin or source of goods/services;
  4. Lead to brand identification amongst consumers as a substitute to product testing which is extremely time consuming;
  5. Signify that all goods/services bearing the mark are of a particular nature and equal level of quality;
  6. Act as a tool for protecting the trademark owner’s reputation and goodwill attached to the mark;
  7. Key tool in advertising or selling goods/services.

CONTEMPORARY /NON-CONVENTIONAL TRADEMARKS

The statutory definition of trademarks under TRIPS[5] revolves around conventional and traditional trademarks such as word marks (e.g. Coke, Sony, Nike), numbers (e.g. 7/11 for convenience stores), logos (e.g. Mercedes symbol; Polo clothing symbol), slogans/phrases (e.g. “Don’t leave home without it” by American Express) etc. The definition further gives the opportunity to members to make visual perceptibility an important condition for registration of trademarks. [6]

However, with the increasing diversity of business ventures, trademarks related to just two dimensional visual representation have given way to a plethora of nonconventional trademarks that are distinguishable by senses other than sight. Such non-conventional marks include shape marks (e.g. shape of the Coca-Cola bottle), sound marks (e.g.  NBC’s‘s three chimes), smell marks (e.g. scented yarns and threads[7]), single colour marks (e.g. Christian Louboutin’s red sole on footwear), trade dress (e.g. Reader’s Digest overall layout and design) etc.

DISTICTIVENESS: THE BASIC REQUIREMENT FOR OBTAINING TRADEMARK PROTECTION

 “Distinctiveness” is the primary and foremost requirement of a trademark and a trademark must be distinctive in order to serve as an identifier. A trademark maybe inherently distinctive or it can acquire distinctiveness over time through use. Marks that are inherently distinctive are those that have the ability upon being used the very first time to communicate to the consumer that the mark is identifying the source of the product as opposed to describing the product itself.[8]

SPECTRUM OF DISTICTIVENESS

  1. Fanciful/Coined marks are invented marks with no dictionary meaning and receive the broadest and strongest level of protection (e.g. Rolex, Polaroid, Exxon)
  2. Arbitrary Marks are words defined in the dictionary but used in a manner that they bear no relation to the goods sought to be protected under them (e.g. Apple for computers, Amazon for an e-commerce website)
  3. Suggestive marks are those marks which indicate a characteristic or quality of the product or service, but the connection is not immediately obvious.[9] They are protectable (e.g. Citibank for banking services; Playboy for men’s magazine)
  4. Descriptive Marks are marks which describe the nature, kind quality or some other characteristics of the god they sought to protect. Descriptive marks are not protectable unless they have established secondary meaning through public recognition. Such public recognition may be developed over a period of time through substantial use, sales and advertising ( e.g. Raisin Bran for cereal, Vision; Honey-Baked Hams for hams)
  5. Generic marks are marks which describe the product itself and are not protectable. Sometimes due to lack of trademark protection, a mark which was inherently distinctive becomes descriptive through its excessive use by the consumers to describe that category of goods (e.g. Aspirin, Xerox etc.).

Apart from inherent distinctiveness, a trademark may also acquire distinctiveness through excessive use, leading to recognition of the trademark among the relevant segment of consumers. Marks like Coco-Cola and General Motors which are some of the best known and strongest marks today, began their lives as descriptive marks lacking inherent distinctiveness.

RIGHTS OF A TRADEMARK OWNER

A trademark owner acquires the exclusive right to use his trademark against all third parties. There are generally two sources of protection available to the owner of a trademark:

Rights under Common Law:

Trademark rights are not procured through the creation of an inherently distinctive mark, but only via real commercial use. Under the common law, Trademark rights are based on priority of use, i.e. the party first in time to adopt and continuously use a mark for goods or services in a geographic area has priority in that area. Despite non-registration of a trademark, its proprietor acquires common law trademark rights which extend to his market territories.

Rights under Statutory Law:

Trademark rights maybe procured through registration under the relevant domestic legislation. For, instance, in India a trademark owner can apply for a mark which is either inherently distinctive or has acquired distinctiveness through use. Valid registration of a trademark gives the trademark owner the right to use the mark exclusively throughout the territory of India. It also gives the registrant an option to sue a third party for infringement in case it is using an identical or similar trademark.

[1] Available at http://www.wipo.int/trademarks/en/trademarks.html

[2] Available at http://hankeringforhistory.com/the-emergence-of-trademarks-throughout-history/

[3] Factory, Manufacture and Workplace Act 1803

[4] Article 16 of Factory, Manufacture and Workplace Act 1803

[5] WTO’s Agreement on Trade Related aspects of Intellectual Property Law

[6] Article 15(1) of The TRIPS Agreement: “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible”

[7] In Re Clarke , 17 U.S.P.Q  2d 1238(TTAB 1990)

[8] Available at http://definitions.uslegal.com/i/inherent-distinctiveness/

[9] Available at http://www.slwip.com/services/faqs/trademark_distinctive.html

WHAT TO EXPECT

When it comes to our tangible property most of us are aware of the means of protecting our property and are extra vigilant of our proprietary rights. However, not many of us are aware of the various means of protecting our intellectual property i.e. property of the mind!

This blog attempts to create awareness with respect to the features of the various intellectual property rights along with discussing the various trending IP issues…