Trademarks Flashcards
What is a trademark and why is it useful?
A sign capable of distinguishing goods and services produced or provided by one enterprise from those of other enterprises.
words, letters, drawings, shapes, pictures…
Enables consumers to identify and distinguish a product.
Enables companies to define a reputation and protect customer loyalty, and provides incentives to invest in quality.
Trade Name != Trade Mark
How can Trademark protection be obtained?
Through use and registration.
Registration is not compulsory but highly advisable, because it gives the exclusive right to prevent others from marketing identical or similar products under identical or confusingly similar marks.
Requirements for registration of a Trademark
It cannot be:
Absolute Grounds:
- Generic Term
- Descriptive Term
- Deceptive Trademark
- Contrary to public order or morality
- Flags, armorial bearings, official hallamarks, emblems of states… etc.
Relative Grounds:
6. Conflicting with a prior trademark. (registered and non-registered but well-known).
Good practices for choosing a mark
- Meet all legal requirements
- Do a trademark search
- Easy to read, spell and remember
- Avoid undesirable connotations
- Check domain names
Beware of:
1. Coined or “fancyful” words. Invented words, are easy to protect but not to remember.
- Arbitrary Marks. Words that have meaning without relation to the product (Apple).
- Suggestive Marks. Words that hint at one or more attributes of the product. They act as a form of advertising. Risk of rejection.
What is the procedure for registering a mark?
1. Complete trademark application form at trademark office. Include: - contact details - graphic illustration of the mark - description of the goods and services and/or classes of products. 2. Pay fees 3. Formal examination 4. Substantive Examination In some countries, check compliance with requirements. 5. Publication and Opposition 6. Registration 7. Renewal
Trademark certification are valid for 10 years and can be renewed indefinitely.
The rights of a trademark are limited to the territory to which they pertain.
In step 1, the list of goods for which you wish to register your mark are to be chosen amongst the NICE Classification system. Allows for the orderly storage of information about trademarks.
Which routes exist to register a trademark?
- National Route.
- Regional Route (EUIPO)
- International Route (Madrid System y WIPO)
What types of trademarks exist?
a. Trademarks. Used to distinguish certain goods as those produced by a specific enterprise.
b. Service Marks. Marks used to distinguish certain services
c. Collective Marks
Owned by an association or cooperative whom established a set of criteria for using the collective mark and permits individual companies to use the mark if they comply with such standards.
d. Certification Marks
Are given for compliance with defined standards. They may be grated to and used by anyone whose products meet certain standards. The entity that applies for registration must be “competent to certify”.
e. Well-known marks.
Well-known marks are protected against confusingly similar marks for even dissimilar products, to prevent companies from free-riding on the reputation of a well known mark.
How can one work/use a trademark?
If a trademark hasn’t been used for 3-5 years it will be taken off the trademark register.
Some countries require proof of use before registration (US).
There are various trademark strategies (one product, all products, product line…)
Trademark can be sold or licensed. Usually are part of a broader licensing agreement (ex. franchising).
Trademark owners must retain a degree of control so that a certain quality is maintained and the reputation of the trademark preserved.
How are trademarks enforced?
The enforcement of a trademark is with the trademark owner (as with patents). It is up to them to identify any infringement and to decide what measures to take.
- send a letter
- arbitration and mediation
- court proceedings
How does the EUIPO EU Trademark work?
Any person or legal entity can file.
Application can only be filed directly at EUIPO.
Can be in any European language, but must also be filed in a second language amongst English, French, German, Italian and Spanish.
If the trademark is accepted it is automatically valid throughout the EU.
European Union Trademark system coexists with National law.
If EUTM is rejected it may still become a national trademark.
What is the Madrid System and how does it work?
Madrid System = Madrid Protocol + Madrid agreement
administered by WIPO and maintains the International Register of marks.
Madrid Protocol: A treaty that provides for the international registration of trademarks by filing a single international application.
Anyone with commercial establishment or domicile in a party country can file.
Procedure:
1. mark must be registered at the office of origin. “basic registration”
2. file international application with office of origin.
3. Office of origin certifies correspondence with basic registration.
4. Office of origin forwards request to WIPO.
5. WIPO conducts formal examination and record the mark in the International Register.
WIPO does not conduct substantive examination.
For first 5 years, international registration is dependent on the basic registration.
From the date of international registration (filing date of international application) the protection of the mark in each state o the designated countries is the same as if the mark had been filed directly with the national office.
Office of a designated country has 18 months to communicate refusal of protection.
What are the challenges to trademarks presented by the digital world?
Domain names are an important aspect of trademark protection.
Cybersquatting of domain names has become a real problem.
The ICNN adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) which allows complainants to file a case specifying:
- The domain name that is identical or similar to their trademark.
- Why the current owner doesn’t have rights or legitimate interest in the domain name.
- Why the domain name was registered and used in bad faith.
WIPO’s resolution service offers dispute resolution much faster than normal litigation in court.
No monetary damages.
Other protection Mechanisms by ICANN:
- sunrise services
- trademark claim service
- Uniform rapid suspension (URS)
