What is a trademark?
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark can be :
- name,
- word,
- phrase,
- logo,
- symbol,
- design,
- image,
- or a combination of these elements
There are exceptions and the trademark can be based on color, sound or smell.
The following symbols:
- ™ is for an unregistered trade mark, that is, a mark used to promote or brand goods
- ® is for a registered trademark
Different goods and services have been classified by the International (Nice) Classification of Goods and Services
The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, such that a trademark.
- It is important to know that is a mark becomes synonymous with that product or service it becomes generic and the owner cannot longer enforce its proprietary rights. For example “thermos” has been a mark and then became a name of a product.
How to obtain exclusive rights?
The exclusive rights may be established through actual use in the market, or through registration of the mark in the trademarks office – certain jurisdictions do not recognize trademarks rights arising though use.
The registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered. The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or “colourfully” similar to the “registered” products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services (this is available for well-known marks).
Use of a trademark
The trademark must be used. The exclusive rights will cease if a mark is not actively used for a period of time, that is 5 years usually. Unlike other forms of intellectual property the trademark can be renovated a lot of times and in this way to “last forever”.
Madrid system
The system of international registration of marks is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996. Common Regulations under the Agreement and Protocol also came into force on that date. The system is administered by the International Bureau of WIPO, which maintains the International Register and publishes the WIPO Gazette of International Marks. The system facilitates the obtaining of protection for trademarks and service marks. This is an international registration which is equivalent to a bundle of national registrations,so the management of that protection is made much easier. There is only one registration to renew, and changes such as a change in ownership or in the name or address of the holder, or a limitation of the list of goods and services, can be recorded in the International Register through a single simple procedural step. (Source : wipo.int)
Madrid System
Source : www.wipo.int
INTA – International Trademark Association
Certificate mark
Certification marks are used to indicate that goods and services which are marked with them have been certified by the owner of the mark. The certification refer to the origin, material, manufacture, quality or other characteristics. The owner of the certification mark can not produce or trade the goods that he certifies. Some countries provide the possibility that the certification mark owner can use it for advertising or promotional purposes.
For successful registration and maintaining the validity of the certification mark the following conditions are required:
- Maintain a register containing the names, addresses and other information about users of the mark and about the goods and services for which its use is permitted;
- Conditions for granting the right to use certification marks and the standard for goods and services that have to be certified
- Conditions and methods for surveillance and control of the goods which are marked with certification mark
- The conditions when the owner of the certification mark can deprive the right for its use.
Collective mark
Collective marks serve to distinguish goods and services of an association, which owns the brand of goods and services of other producers. A collective mark indicates a direct connection between the collective organization and its members who use the mark.
Registration of collective mark required to provide rules for its use :
- What people will be the users of the brand and their relationship with the applicant;
- Declaration that the applicant will monitor the use of the mark;
- Precise description of the exercised control over use of the mark;
- How do the members apply for membership in the organization which owns the mark
Community collective mark
A collective mark can be any mark (e.g. word, figurative, 3D, etc.), provided that it belongs to a legal person of public law or to an association and it is used to distinguish the goods and services of the members of that association from those of other undertakings.
Under the CTM Regulation (CTMR), there are specific provisions on the protection of collective marks.
Being an indication to serve to designate geographical origin of the goods or services is not an obstacle for the registration of a collective mark. This is in contrast to an individual CTM where a geographical indication cannot be registered for being descriptive.
An applicant for a collective mark is requested to submit regulations governing its use, otherwise the application will be refused.
You can use a collective mark in order to publicise products which are characteristic of your region. Collective marks may be used together with the individual trade mark of the producer of a given good. This allows companies to differentiate their own products from those of competitors, while at the same time benefiting from the confidence of the consumers in products or services offered under the collective mark.
COUNCIL REGULATION (EC) No 40/941 of 20 December 1993 on the Community trade mark :
Article 64
A Community collective mark shall be a Community trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. Associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law, may apply for Community collective marks.
An applicant for a Community collective mark must submit regulations governing its use withinthe period prescribed. The regulations governing use shall specify the persons authorized to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark including sanctions. The regulations governing use of a mark must authorize any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark.
Article 68: Use of marks
Use of a Community collective mark by any person who has authority to use it shall satisfy the requirements of this Regulation, provided that the other conditions which this Regulation imposes with regard to the use of Community trade marks are fulfilled.
Source : www.oami.europa.eu
Community Trademark
A CTM is a trade mark valid across the European Union, registered with OHIM in accordance with the provisions of the CTM Regulations.
Scope and validity
A CTM is valid in the European Union as a whole. It is not possible to limit the geographic scope of protection to certain Member States.
A CTM is valid for 10 years and can be renewed indefinitely for periods of ten years.
Level of protection
A CTM confers on its proprietor an exclusive right to use the trade mark and to prevent third parties to use, without consent, the same or a similar mark for identical or similar goods and/or services as those protected by the CTM.
Value
The CTM system provides for one single registration procedure, consisting of:
- a single application
- a single language of procedure
- a single administrative centre and
- a single file to be managed.
The CTM grants its owner an exclusive right in the 27 member states of the European Union at a reasonable cost.
After any future enlargement of the European Union, any CTM registered or applied for will be automatically extended to the new member states without formality or fee.
Enforcing your rights
A CTM grants its proprietor an exclusive right to prevent unauthorised use of the mark in trade without his/her consent. More specifically, the proprietor is entitled to prevent unauthorised third parties from: putting the registered CTM onto their goods or packaging; offering goods, putting them on the market or stocking them for commercial purposes using the registered CTM; offering or supplying services carrying the registered CTM; importing or exporting goods under it; and using it on business papers and in advertising.
If an unauthorised third party engages in any of these practices, it is guilty of infringing the exclusive right of the proprietor.
The proprietor of a CTM can act against these infringements by taking measures expressly provided for under the CTMR in relation to disputes concerning the infringement and validity of CTMs, and in particular via:
- Proceedings at the Community trade mark courts established under the CTMR
- Filing requests for action with EU customs authorities. This administrative procedure permits proprietors of a CTM to request the EU customs authorities to retain suspected counterfeit goods while under their control.
Maintaining your mark
CTMs shall be put to genuine use in the Community within a period of five years following registration (Article 15 CTMR). Genuine use may be found when the mark has been used in only one part of the Community, such as in a single Member State or in a part thereof. Any person (legal or natural) can protect their registered CTM against revocation on the grounds of lack of use – provided it is put to genuine use in the Community after the initial five-year post-registration grace period or if there are proper reasons for such non-use.
Thus, the best defence against revocation action is pre-emptive: non-generic, non-misleading, genuine and continuous use of the Community trade mark at all times. Use it or lose it!
Source : http://oami.europa.eu/ows/rw/pages/CTM/communityTradeMark/communityTradeMark.en.do
- CTM database
- Statistics
- ECTA – European Communities Trade Mark Association
- CTM Advisory Initiative e.V. (CTM AI)
Literature about CTM:
- 1. IP library
- 1. ECTA Law Book IX – Community Trade Mark (472 pages)
- 2.The Legal Aspects of Community Trade Mark – Eric Gastinel and Mark Milford
Service mark
Businesses use service marks to identify their services and distinguish them from other services provided in the same field. Service marks consist of letters, words, symbols, and other devices that help inform consumers about the origin or source of a particular service.
Service marks protect the good will and reputation earned by businesses that have invested time, energy, and money in bringing quality services to the public. Service marks also encourage competition by requiring businesses to associate their marks with the quality of services they offer. In this way service marks function as a barometer of quality upon which consumers may rely when making decisions to purchase. However, service marks are often infringed, and consumers grow leery when inferior services are passed off as a competitor’s through use of a deceptively similar mark. Thus legal protection of service marks can save consumers from making improvident expenditures for services of dubious or unknown origin.
Source : http://legal-dictionary.thefreedictionary.com/Service+Mark
Well-known mark
Well known, famous, highly renomed, highly reputed, extremely well known – these are the different names of the well known mark. They are kind of mark with specific characterizations.
There is no definition of well known mark but generally it can be defined : Certain level of popularity among the relevant sector of audience in a particular case and particular circumstances
Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation. In many countries, they are also, under certain conditions protected for dissimilar goods and services.
It is important to note that there is no commonly agreed detailed definition of what constitutes a well-known mark. WIPO specifies certain recommendations about that type of marks.
1. the degree of knowledge or recognition of the mark in the relevant sector of the public;
2. the duration, extent and geographical area of any use of the mark;
3. the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
4. the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
5. the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;
6. the value associated with the mark.
Source : Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks
