“A trademark is a sign that individualizes the goods or services of a given enterprise and distinguishes them from those of its competitors.”
A trademark may consist of, for example, a word, a logo, a number, a letter, a slogan, a sound, a color, or sometimes even a smell or texture and which is used to identify the source of goods and/or services with which the trademark is used.
Trademarks are but one area of intellectual property. However they can be extremely valuable and their purpose is to distinguish a product or a service from other products or services. Trademarks can be owned by individuals or companies and should be registered at a governmental agency, which is usually referred to as the Trademarks Office. When a trademark is used in connection with services, it is sometimes referred to as a “service mark”.
Generally speaking, trademarks should be distinctive and should neither be generic nor merely descriptive of the goods or services they represent. Remember the example given, that the word “vegetable” cannot be registered as a trademark of a supermarket, since it is certainly descriptive of items which a supermarket sells. In addition, it cannot be registered as a trademark for carrots, since it is a generic term for carrots. On the other hand, the word “vegetable” might well serve as a trademark for bicycles since it has little or nothing to do with bicycles. A prominent example could be the tech giant “Apple”
A trademark registration will confer an exclusive right to prevent all third parties not having the owner’s consent from using, in the course of trade, identical or similar signs for goods or services, which are identical or similar to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion. This implies that the registered (?) trademark can be exclusively used by its owner or with his/her consent, for example, licensed to another party for use in return for payment.
Some countries provide for the registration of collective and certification marks, which are used to indicate the affiliation of enterprises using the mark, or which refer to identifiable standards met by the products for which a mark is used.
• Collective marks usually belong to a group or association of enterprises. Their use is reserved to the members of the group or association. A collective mark therefore distinguishes the goods or services of members of the association from those of other undertakings.
• A certification mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of the origin, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, thus distinguishing those goods or services from others not so certified.
As I mentioned, generally, national legislations provide for protection of collective and/or certification marks, as well as, for well-known marks. These well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation.
A main difference between collective marks and certification marks is that the former may be used only by members of the association which owns the collective mark, while the latter may be used by any end user who meets the defined standards.
Trademarks are also widely used on internet and as domain names. However, this can give rise to confusion since trademark rights are territorial in nature and can be used and enforced within the countries where the rights have been granted, on the Internet the use and enforcement of trademarks raises some concerns. The Internet has no physical boundaries and is globally accessible. Rights in a trademark, used for similar or even identical goods or services, may in real world coexist in different countries, but their use on the Internet may easily turn into conflicts of rights. This can lead to trademark infringement, misleading advertising and unfair competition.
WIPO is actively addressing these issues through recommendations of working groups.
Increasingly enterprises are seeking to register their trademarks in many different countries. Various regional trademark registration systems are in place and there are the following international treaties and systems in place to facilitate registrations in multiple countries. Namely:
• The Madrid System for the registration of Marks
• The Trademark law Treaty
• The Singapore on the Law of Trademarks
Remember too that all of this effort in protecting trademarks is a sign that enterprises today value the benefits of trademarks, as indeed the Indian and Roman craftsmen did over 2000 years ago.
