Trademark

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See also Brand

A trademark (or, as referred to in Commonwealth countries, a "trade mark") is a distinctive name, phrase, symbol, design, picture, or style used by a business to identify itself to consumers. If the business identified is a service rather than a product, the mark is called a service mark. In text and advertising one often sees the symbol next to a phrase or image that a company thereby claims as a trademark, or the symbol ®, which signifies that the trademark or servicemark has been registered with the United States Patent and Trademark Office (USPTO) or a trademark registry in another country. Trademarking is a central legal component for corporate branding. In many countries colours (such as the colour orange for champagne and the colour brown for parcel delivery), three-dimensional marks, smells and sounds are also capable of trademark protection. In the European Union, for example, the smell of cut grass has been registered in respect of tennis balls.

Purpose

The basic policy of trademark law is to prevent the public from being deceived and allow the producer of a product to have a specific product associated with a specific manufacturer, or as it is described in Europe,as 'a designation of the origin and quality of the goods or service to which the mark is applied'. From an economic point of view, a trademark is a symbol that allows a purchaser to identify goods or services that he is considering purchasing. For this reason, most jurisdictions require that the trade mark is not descriptive of the goods concerned. For example, the trade mark 'Apple' would be refused by most national trade mark registries in respect of fruit sales, but is registered around the world in respect of computers. By identifying the source of goods or services, marks help consumers to identify their expected quality and assist in identifying goods and services that meet the individual consumer's expectations. Trademarks also fix responsibility. Without marks, a seller's mistakes or low quality products would be untraceable to their source. Therefore, trademarks provide an incentive to maintain a good reputation for a predictable quality of goods. For example, if a consumer likes Nabisco saltines, nothing else will suffice. A consumer has a reasonable expectation that Nabisco saltines purchased anywhere in the United States will be of uniform taste and quality.

Another underlying purpose of trademark law is protecting the owner's investment in the quality of the goods or services sold under the mark known as dilution. Therefore, trademark law protects businesses from unfair competition and deceptive advertising by their competitors which can dilute the distinctiveness of a mark. For example, a company other than the Atlanta-based Coca-Cola Corporation that sold a soft drink called "Coke" in red and white cans would clearly be guilty of trademark infringement, confusing consumers as to the source of the product (though such confusion need not be intentional to be infringing). On the other hand, a company selling the carbonized coal byproduct called "coke" to steel mills would not likely be guilty of infringement, because there is little chance any consumer will mistake the two. The Atlanta company "owns" (in the intellectual property sense) not the word or design itself, but the exclusive right to use it to identify a particular product or service. In order to define which goods or services a company has rights over all goods and services in the world are categorised into 45 (formerly 42) internationally recognised categories. A trade mark registration will only be for some of those categories. In addition, within each category the trade mark application must specify exactly which goods/services are claimed. Most trade mark registries will not accept applications which try to claim 'all goods in Class 1 ' (for example).

A similar concept has developed in trademark law called trade dress where the look and feel of a product is taken into consideration when determining if infringement has taken place. This principle, that similarities can lead to confusion is used in many jurisdictions, although often under different names. In an English law case the judge famously described the level of similarity required as being enough to confuse the normal person and not just "an idiot in a hurry."

"Coke" itself (amongst many other brands) is a "well-known mark" as defined in TRIPs (discussed further below), and entitled to additional forms of protection in various jurisdictions because of its fame and the extent of public recognition. This secondary meaning affords the mark holder additional protection under U.S. law such as preventing someone from using the mark Coca-Cola on some other product such as clothing without the permission of the holder.

Relationship to copyright and patent law

Unlike other forms of intellectual property such as copyrights and patents, trademarks must be actively used and defended. A copyright or patent holder may "sit on" his creation and prevent its use, but a company claiming (even registering) a trademark that fails to make active use of it, or fails to defend it against infringement, may lose the exclusive right to it. Further, if a court rules that a formerly trademarked term has become "generic" through common use (and so the average consumer doesn't realize it is a trademark), it may also be ruled invalid. For example, the Bayer company's trademark "Aspirin" has been ruled generic in the United States, so other companies may use that name for their products as well. (It is still a trademark in Canada).

Trademarks are not granted for one-off fixed terms (unlike a patent for example); they are valid as long as they are actively in use (and usually require a renewal fee to be paid to the registry every few years). However, a trademark registration will expire if the owner of the registration fails to comply with the requirements of the trade marks registry for that jurisdiction for maintaining and renewing the registration.

One principle of Trade Mark law in various jurisdictions in Europe is that of 'wrongful threats', which is designed to prevent large corporations from 'bullying' smaller companies. Where one person makes a threat to sue another for trade mark infringement, without a genuine basis or intent to carry out that threat, the threat itself becomes a basis for legal action. This power is used quite frequently; in addition to the obvious cases where the person threatening never had a trade mark it catches out foreign corporations who have a trade mark in their home jurisdiction but not in the country concerned and companies who have a trade mark which has lapsed or is not for the goods/services concerned. The final group who get caught by this provision are those claimants/plaintiffs who sue, and find that the court agrees with a defendant who claims the that mark is invalid for some reason (such as non-use). In that case the mark was never valid, and thus all threats to sue on it were groundless—the defandant can walk away with damages from the claimant.

Types of trademarks

Other types of trademarks include:

Trademark laws vary from country to country

As a result of the WTO (formerly GATT) Trade Related Intellectual Property ("TRIPS") agreement, trademark law globally is gradually becoming harmonised. This does not mean that trademarks registered in one jurisdiction automatically become registered in another jurisdiction (although a 'Community Trade Mark' system whereby a single registration with the OHIM registry can lead to a trade mark covering the 15 (soon 24) members of the European Union does exist), but it does mean that many trademark laws are shared by various countries. For example, Art 15 of the TRIPs agreement defines "sign". This definition or variations thereof can be found in a variety of countries' trademark legislation.

The Madrid Agreement allows trademarks registered in one country to be registered in other countries and territories.

Trademark laws of various countries:

Trademarks and Domain Names

The advent of the Domain Name System has lead to attempts by trademark holders to take over domain names based on trade mark rights. Unlike a trademark, which is restricted by country and class of goods, domain names can be global and not limited by goods or service. This use of trademark law has lead to several high profile court decisions, and the creation of the ICANN Uniform Dispute Resolution Policy and other dispute policies for specific countries (such as Nominet UK's DRS).

Additional Resources

External links

References