Trademarks Flashcards
Trademark: Definition
- Is a word, phrase, symbol or design, or a combination of
words, phrases, symbols or designs, logos, company
names, product names, and slogans that identifies and
distinguishes the source of the goods of one party from
those of others. - Examples – Reebok, Mc Donald’s, Nike, Levis etc
- Trademark is a symbol that indicates who is responsible for the goods placed in the market
- Trademarks help to distinguish between the goods of competing traders
- Trademark helps a customer to buy goods of a certain quality (e.g. colour, size, weight,
fragrance, taste.)
Trade Names vs Trademarks?
Trade names are names, terms
or designations that serve to
identify and distinguish an
enterprise and its business
activities from those of other
enterprise and its business
activities
Whereas the trademark
distinguishes the goods or
services of an enterprise, a trade
name identifies the entire
enterprise and symbolises the
reputation and goodwill of the
business as a whole.
Why do we have trademarks and tradenames
- The main reason for protecting trademark and trade
names against infringement is that the public might be
misled into thinking that two separate enterprises using
same or confusingly similar trademark or a trade name
constitute one and the same enterprise - It is not only harmful to the consumers but it also permits
the infringing enterprise to benefit unfairly.
What is a tradename under UK law?
Trade name refers to a name which is used to impart distinct identity to the company or firm.
Such company will conduct their business activities under this term. The trade name is
mandatory for registering the company under the existing act.
* One can choose any trade name for its business provide it is not already in existence. That
means two identical trade names cannot exists in a legal space.
What is a trademark under UK law?
- Trademark refers to a brand name that carries exclusive
rights. It includes logo, symbol, word, numerals, or a
combination of these. It helps the company to distinguish
their offering from the rest of the competition. - In the UK, a trade mark registration gives the proprietor the
exclusive right to use the registered trade mark on those
goods or services for which it is registered. A registration
also gives the owner the right to stop others from using
confusingly similar marks for their goods or services.
What is Trademark infringement?
Trade Marks Act 1994 (TMA)
2008 Trade Marks Directive
2015 Trade Marks Directive
Trademark infringement occurs
when someone else uses a
sign that is identical to a
registered trademark in the
course of a trade.
The TMA goes further to state
that even if a sign is similar to
that of a registered trademark,
this could be classed as an
infringement if it creates
confusion in the minds of the
public.
Therefore, a Defendant will not
escape liability for trademark
infringement by simply altering
the wording or logo of a
registered trademark.
what is passing off?
- Trademarks can still be enforced even if they have not been registered. This is
through the common law action of passing off. - The underlying principle behind this action is that “a man is not to sell his
goods under the pretence that they are the goods of another man”. Broadly
speaking, passing off occurs when:
A claimant’s goods or services have goodwill attached to them, i.e. they
have a particular image and reputation attached to them, which enable
the public to easily recognise those particular goods or services;
There has been a misrepresentation to the public (which does not have
to be intentional) which would lead, or is likely to lead, the public into
believing that the goods or services offered by the defendant belong to
the claimant; and
There has been damage caused to the goodwill or reputation of the
claimant
Service Marks
- Where a trademark is used
in connection with services,
it may be called a “service
mark”. - Service marks are used by
hotels, restaurants, airlines,
tourist agencies, laundries
and cleaners etc
what are the three important concepts of trademarks?
Marks that cannot be registered
Distinctiveness
The spectrum of distinctiveness.
Marks that cannot be registered
Generic Terms
Scandalous or immoral marks
Deceptive Terms
Flags and Official Hallmarks
Descriptive Terms
As per modern business conditions, a TM performs the following functions
- It identifies the product and origin.
- It guarantees its unchanged quality.
- It advertises the product.
- It creates an image for the product
A Trademark should have the following essential elements
A Trademark should have a Distinctive Character (Distinctiveness of the Trademark)
Non-descriptiveness
Non-confusing
Lawful
(Add more)
Are Trademarks international?
There is No “Global Trademark” HOWEVER - you can file trade
marks in over 100 countries via the World Intellectual Property
Organization (WIPO) on one application.
Do UK Trademarks apply internationally
No - If you want to use your trade mark in countries other than
the UK, you can apply to the trade mark office in each country
Do UK trademarks apply in the EU?
No – Trademarks in the UK only apply in the UK. Trademarks
registered under the EU are registered in all 27 member states.
what are the Features of Trademarks?
- Trademark should preferably be an invented word. The best trademarks are invented words.
E.g. ZEN ( a car) , DIO (non-geared scooter). - Trademark, if it is a word, or name, then it should be easy to pronounce and remember. E.g.
Lux for soap, Maruti Zen for car, Mercedes for cars, Levis for jeans, Reynolds for pens, Parker
for pens etc. - In case of a device mark, the device should be capable of being described by a single work.
E.g. Camel for Camel Ink, Kingfisher bird for Kingfisher Beer. - Trademark should be easy to spell correctly and write legibly
- It should not be descriptive but may be suggestive of the quality of goods. For example, a
mark A-I would generally suggest superior quality. Avon (A-1) cycles for instance.
It should be short. E.g. ‘Flex’, ‘Bru’, ‘Rin’.
It should appeal to the eye as well as ear.
It should satisfy the requirements of registration
The spectrum of distinctiveness
Fanciful marks:- A fanciful / inherently
distinctive trademark comprises an
entirely invented or “fanciful” sign. For
example, “Kodak” had no meaning
before it was adopted and used as a
trademark in relation to goods,
whether photographic goods or
otherwise.
Arbitrary marks:- An arbitrary
trademark is usually a common word
which is used in a meaningless
context (e.g. “Apple” for computers).
Such marks consist of words or
images which have some dictionary
meaning before being adopted as
trademarks, but which are used in
connection with products or services
unrelated to that dictionary meaning
Suggestive marks:- A suggestive
trademark tends to indicate the
nature, quality, or a characteristic of
the products or services in relation to
which it is used, but does not describe
this characteristic, and requires
imagination on the part of the
consumer to identify the characteristic.
Suggestive marks invoke the
consumer’s perceptive imagination .
Descriptive marks:- A mark is
considered merely descriptive if it
describes an ingredient, quality,
characteristic, function, fea ture,
purpose, or use of the specified goods
or services
Generic terms:- A generic term is
the common name for the products
or services in connection with which
it is used, such as “salt” when used
in connection with sodium chloride.
A generic term is not capable of
serving the essential trademark
function of distinguishing the
products or services of a business
from the products or services of
other businesses
what Other Forms of
Trademarks are there?
Colour Marks
* A single image delivers a lot of information in a very short time because we perceive an image
all at once, whereas reading or hearing often takes significantly longer to process the same
information.
* Many of the most recognizable brands in the world rely on color as a key factor in their instant
recognition.
SOUND MARKS
* Depends on aural perception of the listener
which may be as fleeting as the sound itself.
* If a sound lingers in the mind of the listener
and is so inherently different or distinctive
* that it causes the mind of the listener to be
awakened when heard and
* the listener subsequently associates a source
or event with that sound then the sound may
be eligible for trademark.
What is the meaning of trademarks, and does it apply to everyone?
The meaning of trademarks is that they are distinctive signs, symbols, or expressions used by individuals, businesses, or organizations to identify and distinguish their goods or services from those of others in the marketplace. Trademarks can be in the form of words, logos, slogans, or even a combination of these elements. Trademarks provide exclusive rights to the owner and help consumers recognize and associate particular products or services with a specific source or origin. Trademark protection applies to individuals, businesses, organizations, and legal entities.
What are the laws protecting Trademarks in the Uk?
Trade Marks Act 1994 (TMA), 2008 Trade Marks Directive 2015, and Trade Marks Directive
What is the difference between patent holders and Trademarks?
The main difference between patent holders and trademark owners lies in the nature of the intellectual property they protect. Patents protect new inventions or technological advancements, granting exclusive rights to the inventor for a limited period. On the other hand, trademarks protect distinctive signs that identify goods or services in the marketplace. While patents focus on protecting the underlying technology or functionality of an invention, trademarks safeguard the brand, reputation, and goodwill associated with a particular product or service
how to apply for a trademark?
a. Conduct a trademark search: Before filing an application, it’s advisable to conduct a search to ensure that your proposed trademark is not already registered or similar to existing trademarks.
b. Prepare the application: Gather the necessary information and create a clear representation of your trademark. Specify the goods or services for which you seek protection.
c. File the application: Submit your trademark application to the UK Intellectual Property Office (UKIPO). Pay the required fees.
d. Examination and publication: The UKIPO will examine your application to ensure it meets the legal requirements. If approved, your trademark will be published in the UK Trademarks Journal for a period of time, during which third parties can oppose the registration.
e. Registration: If no opposition is raised or successfully overcome, and the application meets all requirements, your trademark will be registered, and a registration certificate will be issued.
