IP | Trademarks | B5

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Blog 5 : Trademarks

A Trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks have been around for many years. In ancient times, artisans would sign or mark their work to prove they had made it. Gradually, laws evolved to protect such marks.

These days, trademarks are essential to business. They take many forms and identify a huge array of goods and services. Enterprises spend enormous amounts of time and money developing their brands and trademarks.

Legal protection allows the owner of a mark to control who uses it. This means that enterprises can

develop and promote their goods and services without having their reputation undermined by counterfeiters, and consumers can rely on trademarks being genuine.

Different types of trade mark

All sorts of signs may be used as trademarks – words, letters, numbers, symbols, colors, pictures, three-dimensional signs such as shapes and packaging, holograms, sounds, even tastes and smells. To be eligible for registration, the basic principle is that a trademark must be distinctive, so it cannot just be a generic description of the product or service. Nor can it be identical (or very similar) to a trademark already registered or used for that type of product or service.

Trademarks are not just used to identify the goods and services of a particular enterprise. There are also collective marks, each owned by an association and used by its members. For example, professional associations of accountants, engineers and architects often use this kind of mark. And there are certification marks which show that a product or service complies with certain standards, such as Ecolabels for products with reduced environmental impacts.

Protecting trademarks

 The best way of protecting a trademark is to register it. Owners of a registered mark have the exclusive right to control who uses it: they can use it to identify their own goods or services, or license or sell it for someone else to use. To register a mark in a territory, the applicant needs to submit a reproduction of it to the trademark office plus a full list of the goods or services to which it would apply. As well as being sufficiently distinctive and not conflicting with any existing mark, the mark must not be misleading or deceptive or violate public order or morality.

Once a trademark has been granted, the owner can sue in the relevant national court if it is infringed by someone else. Equally, a trademark owner could face a legal challenge from a third party arguing that it is too similar to their own mark. A trademark will only be granted for a limited period – in most countries, ten years – but the mark can be renewed as many times as the owner wishes on payment of additional fees, provided it is still being used, so in practice a trademark can be protected indefinitely.

National, regional and international protection

Like most IP law, trademark protection is territorial. However, regional and international systems have developed to make it easier to obtain trademark protection in many countries.

WIPO offers international registration under the Madrid System. By filing a single application, users can obtain trademark protection in as many of the countries that have joined the System as they wish. There are also online tools that allow users to search trademark registers and help them manage renewal of their marks in different territories.

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