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.
What do you think of the suitability of the following design for beverages made from fruit?
A fruit tree, such as an apple tree, by itself, is descriptive and not distinctive; one could argue that all apple growers could use such a symbolic design. However, the tree shown in the symbol has many different fruits, which does not occur in nature. Grapes, pears, oranges, peaches, cherries are all shown in an unique fashion; this symbol rises to the level of distinctiveness necessary to gain registration. This is a very good example of how inherently non-distinctive elements can be combined in such a creative way that the totality becomes distinctive.
To get a trademark known and respected requires considerable investment and usually quite a period of time. Therefore, it is in the interest of everyone seeking to use a trademark to make sure that it is protected as a valuable piece of intellectual property. Listen to the next audio segment to hear how this protection is achieved.
What were the main methods mentioned that a company could use to protect its investment in a trademark?
The speaker mentioned that the basis of trademark protection is in the laws of the country or region. Registering the trademark is often required before it can be protected but also it could become protected in some instances as a result of prolonged usage.
Trademarks typically identify individual enterprises as the origin of marked goods or services. 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. Example: ISO 9000.
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.
Some companies have successfully established, via their trademarks or service marks, worldwide renown. Subsequently, consumers can, without effort, recognize and identify their goods and services, their qualities and their features without referring to the location of the company in question. These trademarks are called 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.
There is no straightforward definition of a well-known mark. What must be defined, however, are the factors to be considered in determining whether a mark is well-known or not. These factors include the degree of knowledge or recognition of the mark in the relevant sector of the public and the duration, extent and geographical area of any use of the mark.
Many companies wish to use their trademark in many different countries, so listen to the next audio to see if it possible to get worldwide protection for a trademark.
“A trademark is a sign that individualizes the goods or services of a given enterprise and distinguishes them from its competitors.”
This section has covered the basics of trademarks. You have learned that a trademark is a word, a logo, a number, a letter, a slogan, a sound, a color, or sometimes even a smell which identifies the source of goods and/or services with which the trademark is used.
Trademarks are one area of intellectual property and their purpose is to protect the name of the product rather than the invention or idea behind the product. Trademarks can be owned by individuals or companies and should be registered at a governmental agency, which is usually referred to as the Trademarks Office. When a trademark is used in connection with services, it is sometimes referred to as a “service mark”.
Generally speaking, trademarks should be distinctive and should neither be generic nor merely descriptive of the goods or services they represent. For example, the word “vegetable” cannot be registered as a trademark of a supermarket, since it is certainly descriptive of items which a supermarket sells. In addition, it cannot be registered as a trademark for carrots, since it is a generic term for carrots. On the other hand, the word “vegetable” might well serve as a trademark for bicycles since it has little or nothing to do with bicycles.
Trademarks should preferably not be geographical or primarily a surname. Thus, “Paris” cannot serve as a trademark for perfume. In many countries, trademarks which comprise mere letters and/or numbers (i.e. the proposed trademark cannot be pronounced as a word or words or just has too few letters) or are surnames are considered to be indistinct.
In some instances, trademark registration can still be obtained for trademarks that are merely (i) descriptive, (ii) a surname, (iii) geographic or (iv) indistinct. Trademarks, also known as brand names, are part of everyday life. The average person sees or hears more than 1,500 trademarks each day! Just as your own name identifies and distinguishes you, the main purpose of a trademark is to identify the source of a product and to distinguish that product from products coming from other sources. For example, a trademark helps you to choose between Ivory soap and Dial soap.
It should be mentioned that collective marks and certification marks are also protected in a large number of countries.
Famous marks or well-known marks have also been granted a special protection.
Trademarks usually ensure a consistent level of quality – be it good or bad. A mark helps you to use your experience either to return to a desirable product or service or to avoid an undesirable one.
Legislative Texts: Paris Convention, Trademark Law Treaty (TLT), TRIPS Agreement