FANDOM


Trademark


  • Commercial sign that distinguishes goods or services of one company from those of another
  • Functions:
    • Distinguish
    • Brand image
    • Goodwill
    • Means of competition
    • Economic value
  • Subject matter of protection:
    • Words, including personal names (Volvo, Tommy Hilfiger)
    • Letters, Numerals (V70)
    • Figurative elements (Duracell bunny)
    • Slogans (The best a man can get)
    • Colours
    • Shapes of goods and packaging (Coke bottle)
    • Sounds (jingles etc.)
    • Moving marks (animations)
    • Smells can not be registered. Not "clear, precise, self-contained, easily accesible, intelligible, easily accesible, durable and objective"
  • Trademark protections can be attained
    • through national, regional and international registration, or
    • by use. Acquired distinctiveness through long and extensive use (not all countries)
  • Nice classification (international classification):
    • Used by most countries
    • classes 1-34, goods
    • classes 35-45, services
  • Terms of protection
    • Usually ten years at a time
    • Can be renewed indefinitely
    • Some countries require intention/declaration to use
  • Trademark can be cancelled if not in use for a specified period of time (usually 3-5 years)
  • Use means:
    • use in registered form or significantly same form
    • use with with owners consent (e.g. licenced) valid use.
  • Requirements for protection:
    • Distinctiveness - capable of distinguishing the goods or services of one undertaking for from those of others.
      • Inherent distinctiveness - By new and unique design
      • Acquired distinctiveness - Trademarks that are inherently non-distinctive can obtain protection through use. This could be the case for words (e.g. Landcruiser)
    • Degree of distinctiveness can affect scope of protection.
    • Descriptive marks are presumed to be devoid of any distinctiveness. Descriptive might be:
      • signs that designate kind, quality, quantity, intended purpose, value, geographical origin or the time of production or the goods, or of rendering of the service
    • Presumed to be devoid of distinctive character:
      • signs which consists exclusively of the shape which results from the nature of the goods or the shape of goods which is necessary to obtain a technical result.
      • The shape of LEGOs are necessary to obtain a technical result and can as such not be registered, even though it has distinctiveness acquired by use.

Community Trademarks are pending or registered trademarks in the whole of the european union.

  • Exceptions to registrability (Art. 7, Community Trademark Regulation EC 207/2009):
    • Signs devoid of descriptive character
    • Descriptive signs
    • Signs or indications customary in current language
    • Signs which consists solely of
      • the shape which results from the nature of the goods
      • the shape of the goods necessary to obtain a technical result
      • the shape which gives substantial value to the goods

Rights conferred by a trademark

  • Propietor of a trademark may prohibit:
    • Use of an identical mark for identical products and services
    • Use of identical or similar mark for identical or similar products, if this entails likelihood of confusion (including likelihood of association)
    • Use of an identical or similar mark for goods or services which are not similar to those for which the mark is protected, if the mark has a reputation and if the use made of it takes unfair advantage of or is detrimental to the reputation or the distinctive character of the mark.
  • Things to be assesed in likelihood of confusion:
    • Visual, aural and conceptual similarity of the marks in question, based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components including likelihood of association.
    • The degree of similiarity between the mark and the sign and between the goods and services.
    • The more similar the goods and services covered and the more distinctive the earlier mark, the greater the likelihood of confusion.