Self-Assessment Question

Introduction

Trademarks existed in the ancient world. As long as 3000 years ago, Indian craftsmen used to engrave their signatures on their artistic creations before sending them to Iran. Later on, over 100 different Roman pottery marks were in use, including the FORTIS brand that became so famous that it was copied and counterfeited. With

the flourishing trade in the Middle Ages the use of trademarks increased. Today trademarks (often abbreviated as TM in English) are in common usage and most people on the planet could distinguish between the trademarks for the two soft drinks Pepsi-Cola_ and Coca-Cola_.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.

In this module you will learn what sort of signs can be used for trademarks and what characteristics they must have. You will be able to distinguish between a collective mark and a certification mark. This module will also explain how wellknown or famous marks are given special protection under the Paris Convention and the TRIPSAgreement.

Trademarks

I would like you to begin by listening to the first audio segment describing what trademark means and its characteristics.

Audio Segment 1: So, could you tell me what a trademark actually is?

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. Whatsort of characteristics should a trademark have?

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

Therefore a formal definition of the term trademark could be:

“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. The Coca-Cola Company ® PepsiCo, Inc. ® 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.

The next audio segment will offer you some descriptive examples of trademarks.

Audio Segment 2: Could you now give some examples of the sort of signs

that we can think of?

Well, there are word marks, consisting of words, letters, numerals, abbreviations or names for instance, surnames. We need only think of a famous make of car, Ford – named, of course, after Henry Ford, who built the

first one; then there is WH Smith, the booksellers and so on. We find many names used as trademarks. We also find abbreviations such as IBM, but trademarks can also be made out of devices or figurative elements, like that of

the Shell oil company.

So when you say device, you mean things like the Shell logo?

Yes, I do but that is just a two-dimensional device, whereas trademarks can also be three dimensional – consisting of the packaging of goods or the goods itself. Then of course the color features of trademarks can also be protected.

We are also, especially in recent times, seeing a new kind of trademark coming on the market. This is the hologram mark. If you look at a credit card for instance, you will see a small image that changes according to the angle from

which you look at it. There are such things as sound marks: an advertising jingle can serve as a trademark. There are even smell marks in certain countries, where a particular scent could be protected as a trademark. So there

is a wide variety of signs that can be used as trademarks, but always on the same two conditions: the mark must be distinctive and must not be deceptive.

( shells photo)

To sum up, the following examples may help you to know what trademarks (including service marks) are:

Words: ‘Apple’ for computers; Deutsche Bank for a bank,

Arbitrary or fanciful designations: Coca-Cola, Nikon, Sony, NIKE, Easy Jet.

Names: Ford, Peugeot, Hilton (hotel)

Slogans: ‘Fly me’ , for an airline;

Devices: the star for Mercedes Benz, the flying lady for Rolls Royce

Number: the 4711 cologne

Letters: GM, FIAT, VW, KLM

Pictures or symbols: Lacoste (small crocodile)

In the first audio segment, the speaker also mentioned two of the characteristics a trademark must have. Firstly it should be distinctiveand secondly it should not be deceptive. To learn more about these two requirements listen to the next two audio segments.

Audio segment 3: Can you give me an example of how a trademark is distinctive?

To be distinctive it must by its very nature be able to distinguish goods and services as I mentioned just now. I think a good example would be the word “apple”. While “Apple” is a very distinctive trademark for a computer, because it has absolutely nothing to do with computers, it would not be distinctive for actual apples. In other words, someone who grows and sells them could not register the word ‘apple’ as a trademark and protect it, because his competitors

have to be able to use the word to describe their own goods. So 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.

Audio segment 4: Could you give me an example of a trademark that might possibly be deceptive?

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. One of the key points raised was that when assessing the distinctiveness of a sign for a TM it has to be judged together with the goods or services it is to be associated with.

Self-Assessment Question

SAQ 1:

Do you think the made- up word, "FRUMATO", would make a good trademark for a drink made from a mixture of fruit juice and tomato juice?

Type your answer here:

SAQ 1 Answer:

Looking at the specification of the goods the derivation of the mark is obvious; it is the combination of the words FRUit and toMATO. It is not a word that exists in any dictionary and it is not one that would naturally occur to other traders to use. Therefore it can be said to tend to be distinctive. There is, however, a cautionary tale of the Boots Pure Drug Company. They marketed a tonic medicine made fromextracts of liver and iron and made up the word LIVRON to indicate it. Unfortunately, a rival pharmaceutical firm had a manufacturing facility in the French town of Livron. The use of this made-up word was refused.

Date: 2016-01-14; view: 743