TRADEMARKS Flashcards
What is a trademark, and what does it do?
A trademark is any visible sign (e.g., symbol, logo, or name) that identifies the goods of a specific business and distinguishes them from competitors. It helps consumers recognize and trust the source of a product.
How have trademarks evolved in importance over time?
Trademarks date back thousands of years (e.g., Indian craftsmen, Roman pottery marks like “FORTIS”). During industrialization, they became vital for differentiating products in competitive markets and guiding consumer choices.
What are the main functions of a trademark?
Indicating Source: Helps consumers trust that a product comes from a specific enterprise.
Distinguishing Products: Differentiates a business’s goods from competitors’.
How do trademarks benefit businesses and consumers?
For Consumers: They clarify choices and ensure quality.
For Businesses: They reward high-quality production, foster brand loyalty, and encourage economic progress.
What are service marks, and how are they similar to trademarks?
Service marks identify and distinguish services (e.g., airlines, insurance companies) rather than goods. They have the same origin-indicating and distinguishing functions as trademarks and can be registered, renewed, canceled, assigned, and licensed in the same way.
What is a collective mark, and how is it regulated?
A collective mark is owned by an association whose members can use it if they follow specific rules. Regulations about its use must be included in the registration application, and misuse (e.g., misleading practices) can result in cancellation. Collective marks protect consumers and are internationally supported by the Paris Convention.
What is a certification mark, and what does it indicate?
A certification mark signifies that a product or service meets specific quality standards or requirements, such as organic certification for food products. It is used to assure consumers of compliance with recognized standards.
What is the primary difference between collective marks and certification marks?
Collective Marks: Used exclusively by members of a specific organization.
Certification Marks: Open to anyone who meets the defined standards, following the “open shop” principle.
What is a key requirement for registering a certification mark?
The applicant must be competent to certify the products or services. This ensures protection against misleading practices.
Defined Standards: The specific criteria for using the certification mark must be clear and enforceable.
Public Safeguard: Ensures consumers are not misled by inappropriate or false certification claims.
Name three examples of signs that may serve as trademarks.
Words (e.g., slogans or company names).
Three-dimensional signs (e.g., product shapes like the Coca-Cola bottle) (unique signs).
Sound marks (e.g., the MGM lion’s roar).
Practical Limitation: Most countries require trademarks to be graphically representable for easier registration and public awareness.
What are the key characteristics of a valid trademark?
Distinctiveness: Must be unique and distinguish the goods or services.
Novelty: Should not be identical or similar to existing trademarks like concept, visual or phonetic wise.
Not Misleading: Cannot deceive consumers about the product’s nature or origin.
Not Descriptive: Cannot simply describe the product or service., nor generic
Does Not Violate Public Order/Morality: Should not be offensive or illegal
What are the key steps to obtain trademark protection?
Select a distinctive mark that is not descriptive, generic, misleading, or immoral.
Conduct a search to ensure the mark is not already in use.
File a trademark application with the appropriate office, including the applicant’s details and a representation of the mark.
Examination process: The trademark office checks for completeness, distinctiveness, and conflicts with prior rights.
Publication: The application is published for third-party opposition.
Registration: Once approved, the mark is registered, and a certificate is issued.
Maintain registration by using the mark, as non-use may lead to cancellation.
Renew registration every 10 years, before the term ends.
Monitor for infringement to protect the mark
How do you maintain and enforce trademark rights?
Use the trademark properly to avoid it becoming generic. Use the mark as an adjective, not a noun.
○Use the trademark notice, such as the circled R (®), to indicate registration.
○Renew the trademark registration as required.
○Monitor for infringement and take action against those who use confusingly similar marks.
○Enforce the trademark in cases of infringement to protect against consumer confusion.
○Consider licensing the trademark to others, while maintaining control over its use.
○Geographic scope should be considered as trademark rights are territorial and can be limited to a particular country
How is a trademark protected, and why is registration important?
A trademark can be protected through use or registration, but most countries rely on registration for full protection. The Paris Convention requires countries to maintain trademark registers. In countries prioritizing use, the first user may have priority in disputes over the first registrant.
What happens if a trademark is not used?
Non-use can lead to cancellation unless justified by factors like import restrictions or legal barriers. Owners are given a grace period (3–5 years) after registration to start using the trademark. Owners must prove use if their mark is challenged.
How can improper use of a trademark lead to loss of rights?
If a trademark becomes generic (e.g., “Cellophane”), it loses distinctiveness. To avoid this:
Pair the trademark with a product name (e.g., “NESCAFÉ instant coffee”).
Use trademarks as adjectives, not nouns (e.g., “NESCAFÉ varieties”).
Highlight trademarks in marketing and use symbols like “®” to show registration.
What are the key steps in the trademark registration process?
Filing an Application: Submit details (name, address, trademark specifics) to the Trademark Office.
Examination:
Formal: Checks if the application follows rules.
Substantive: Ensures the mark is distinctive, not offensive, and doesn’t conflict with existing trademarks.
Publication: Accepted trademarks are published, allowing challenges.
How long does a trademark last, and what happens after it expires?
Trademarks are valid for a set period (commonly 10 years).
They can be renewed indefinitely by paying renewal fees, helping owners assess if the trademark is still relevant.
What are the grounds for refusing a trademark application and the systems used to examine them?
Grounds for Refusal:
Absolute Grounds: Lack of distinctiveness, deceptive or immoral nature, use of generic or descriptive terms.
Relative Grounds: Conflict with existing trademarks for similar goods or services.
Examination Systems:
British System: Examines both absolute and relative grounds; includes opposition procedures.
Simplified System: Examines only absolute grounds; conflicts resolved by parties involved.
German System: Examines absolute grounds and allows an administrative opposition process, balancing time and cost efficiency.
What are the key reasons a trademark can be removed from the register?
Failure to Renew: Trademarks are registered for a limited period. If the owner does not renew the trademark by paying the renewal fee, even during a grace period (with a surcharge), it is removed.
Partial renewal is possible, leading to the removal of unused goods from the registration.
At the Owner’s Request: Owners can voluntarily request full or partial cancellation of their trademark registration.
Failure to Use: If a trademark isn’t used within a legally defined grace period, interested parties can request its removal.
Courts may order full or partial cancellation, depending on whether the owner can justify the non-use.
Invalid Registration (Nullity): Trademarks can be removed if they were wrongly registered (e.g., deceptive, generic, or non-distinctive).
If invalidity applies only to specific goods, removal will be partial.
Loss of Distinctiveness: If a trademark becomes generic (e.g., the name of a product rather than a brand), it can be removed.
What rights do trademark owners have under the registration?
Exclusive Right to Use: Owners can use the trademark on goods, packaging, labels, and advertising.
They can sell products under the trademark in the market.
Control Over Further Use (Exhaustion of Rights):
Once a product is sold, the owner cannot stop its resale.
However, they can object to:
Repacking or altering the product.
Destroying or misrepresenting the trademark on the product.
Use in Marketing and Business: Owners can use the trademark in advertising, business papers, and other documents.
What is the principle of exhaustion, and when does it apply to trademarks?
Principle of Exhaustion:
After a trademarked product is sold, the owner cannot restrict its resale within the country.
Applies only to the first sale of the product.
Exceptions to Exhaustion:
Owners can object to:
Alteration of the product and its resale under the same trademark.
Repacking that creates the false impression the product originates from the owner.
Territoriality of Rights:
In some countries, trademark owners can block parallel imports (products sold in another country and imported back).
In others, parallel imports are allowed unless they confuse consumers about the product’s quality or characteristics.
What is the essence of a trademark owner’s exclusive rights?
The trademark owner’s exclusive rights stem from the need to prevent consumer confusion.
They have the right to object to:
Use of their trademark or confusingly similar marks for protected goods.
Affixing the trademark to goods, using it in advertising, or offering goods for sale under it.
Protection extends to similar trademarks for similar goods if there’s a likelihood of confusion.
However, these rights are conditional:
The trademark must be in use for the goods it is registered for.
After a grace period, rights are limited to goods on which the mark is actively used.
How can a trademark owner enforce their exclusive rights?
Infringement action:
A trademark is infringed if the use of a similar or identical sign for identical or similar goods creates a likelihood of public confusion.
The test must consider real-world marketplace scenarios.
Opposition procedures:
Trademark owners can challenge applications for confusingly similar marks during the registration process.
This process also evaluates potential risks of confusion from any future use of the applicant’s mark.
