How can companies prevent other people from using their trademark?

Trademarks

Today trademarks (often abbreviated as TM in English) are in common usage.

The growing importance of trademarks in commercial activities is due to the increased competition among companies undertaking trade in more than one country. Trademarks have been used to simplify the identification by consumers of goods or services, as well as their quality and value. Thus, a trademark may be considered as a tool of communication used by producers to attract consumers.

A trademark is basically a sign that is used to distinguish the goods or services offered by one undertaking from those offered by another. That's a very simplified definition, but it does explain essentially what a trademark is.

There are basically two main characteristics for a trademark: it must be distinctive and it should not be deceptive.

Formal definirion: “A trademark is a sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors”

A trademark may consist of words, designs, letters, numerals or packaging, slogans, devices, symbols, etc.

It is necessary to say that a service mark is similar to a trademark, differing only in that the latter protects goods, while the former protects services. Generally speaking the term trademarks includes both trademark and service marks.

Distictivness: in general terms a trademark is not distinctive if it is descriptive. It is descriptive if it describes the nature or identity of the goods or services for which it is used. But a trademark can also be deceptive, namely when it claims a quality for the goods that they do not have.

Typically a deceptive trademark would be one that says that the goods for which it is used have certain qualities when they don't. An example would be the trademark “Real Leather” for goods that are not made of genuine leather.

Alternatively, if the trademark claims a certain geographical origin of the goods, but is not a true one, for example the name "Bordeaux" used for wines that not from the region Bordeaux, that would be another example of a deceptive trademark.

How can companies prevent other people from using their trademark?

They have to rely on trademark laws, but the most common way of protecting a trademark is to have it registered in the Trademark Register, and a great many countries make this a condition of trademark protection. It must first be registered, and once it has been registered it is protected, and its owner is entitled to prohibit others from using it. Registration is not the only way of protecting a trademark, however: unregistered trademarks are also protected in some countries but it is a less reliable form of protection. This is because an unregistered trademark is not protected until it has acquired sufficient distinctiveness and a reputation in the marketplace, which can take considerable time after the initial launch.

Some countries provide for the registration of collective and certification marks, which are used to indicate the affiliation of enterprises using the mark, or which refer to identifiable standards met by the products for which a mark is used. Collective marks usually belong to a group or association of enterprises. Their use is reserved to the members of the group or association. A collective mark therefore distinguishes the goods or services of members of the association from those of other undertakings. The function of the collective mark is to inform the public about certain particular features of the product for which the collective mark is used. An enterprise which uses the collective mark may, in addition, use its own trademark. Example: in an association of architects or engineers, a member may use the logo of the association as well as the logo of the enterprise.

A certificate mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of the origin, mode of manufacture of goods, quality or other characteristics. The certification mark may only be used in accordance with the defined standards.

The main difference between collective marks and certification marks is that the former may be used only by particular enterprises, for example, members of the association which owns the collective mark, while the latter may be used by anybody who meets the defined standards.

Well-known marks or famous marks. Examples: Sony, Versace, Louis Vuitton, etc.

As you know, there may be companies which intend to take unfair advantage of those well-known marks by creating marks that are similar or that would create confusion with the well-known ones, thus misleading consumers.

To overcome this problem, the Paris Convention, the TRIPS Agreement, as well as many national laws, have provided for a special protection of well-known marks.

Trademarks are territorial rights, which basically means that their protection is obtained by national registration. There are certain regional registration systems which make for easier registration of the trademarks and of course, there are also the international treaties, but all these systems ultimately involve registration in every single country and indeed every single territory: we should not forget that, while trademarks can be registered in countries, they can also be registered in customs territories, and there are some other territories that are not recognized as countries.

WIPO has greatly contributed to efforts to make both national and regional systems for the registration of trademarks more "user-friendly" by harmonizing and simplifying certain procedures.

The Trademark Law Treaty (TLT) was adopted in 1994, and sets out the information nationals of one Member State must supply, and what procedures they must follow, to register trademarks in another Member State's TM Office

Legislative Texts:

• Paris Convention

• Trademark Law Treaty (TLT)

• TRIPS Agreement

Date: 2016-01-14; view: 989