Trademark

Although trademarks, copyrights, and patents are all forms of intellectual property (IP) protection, they serve different purposes:

• Trademarks: Protect brand names, logos, and other identifiers that distinguish goods/services. They focus on preventing consumer confusion.

  • Example: The Nike swoosh logo or McDonald’s golden arches.

• Copyrights: Protect original works of authorship, such as literary works, music, film, or software. Copyrights focus on protecting creative expression.

  • Example: A novel, song, movie, or artwork.

• Patents: Protect inventions and innovations, granting the inventor the exclusive right to make, use, or sell the invention for a certain period (typically 20 years).

  • Example: A new type of machine or a pharmaceutical formula.

International Trademark Registration

If you’re running a business globally or in multiple countries, protecting your trademark in various jurisdictions becomes essential.

A. Madrid System for International Trademark Registration

The Madrid System is a convenient and cost-effective way to apply for trademark protection in multiple countries through a single application, administered by the World Intellectual Property Organization (WIPO).

• Process:
  1. File a basic application: You need to first file a trademark application in your home country or the country where your business is established.
  2. Submit an international application: Through WIPO, you can designate the countries where you want trademark protection. The Madrid System covers over 120 countries.
  3. National examination: Each designated country will then examine your application according to their local laws. Each country can approve or deny your trademark.
• Advantages:
  • Single application and fee.
  • Easier management of renewals and modifications.

B. European Union Trademark (EUTM)

If you are only looking to protect your trademark in the European Union (EU), you can file for a European Union Trademark (EUTM) through the European Union Intellectual Property Office (EUIPO). This offers protection in all EU member states with a single application.

Types of Trademarks and Levels of Protection

Trademarks can be categorized into different types based on their strength and distinctiveness. The more distinctive a mark, the stronger the protection it receives.

A. Levels of Distinctiveness

• Fanciful/Arbitrary Marks: These are the most distinctive and receive the strongest protection.

  • Fanciful: Completely made-up words (e.g., Kodak).
  • Arbitrary: Common words used in an unrelated context (e.g., Apple for computers).

• Suggestive Marks: Suggest some quality of the product but require consumers to use their imagination (e.g., Netflix for internet streaming).

• Descriptive Marks: These directly describe a feature or characteristic of the goods/services. These marks are harder to register unless they acquire “secondary meaning” (e.g., Sharp for televisions).

• Generic Marks: These are not eligible for trademark protection, as they refer to general product categories (e.g., Aspirin has become generic).

Enforcement and Protection of Trademarks

Once you’ve registered a trademark, it’s essential to monitor and protect it against infringement. Failure to enforce your rights could lead to loss of trademark protection.

A. Trademark Infringement

Trademark infringement occurs when another party uses a mark that is identical or confusingly similar to a registered trademark in a way that might confuse consumers. Common remedies include:

• Cease and desist letters: Asking the infringer to stop using the mark.
• Injunctions: Court orders to prevent further use of the trademark.
• Damages: Financial compensation for losses incurred due to the infringement.

B. Trademark Dilution

In cases involving famous trademarks, dilution can occur, even without direct competition or confusion. Trademark dilution happens when the use of a similar mark tarnishes or diminishes the value of a well-known brand. For example, if someone started using a logo similar to Coca-Cola for unrelated goods, Coca-Cola could claim dilution.

C. Opposition and Cancellation

After your trademark is published, third parties may have the right to oppose your application if they believe it conflicts with their existing rights. Additionally, once a trademark is registered, it can still be subject to cancellation if another party successfully challenges its validity.

Trademark Maintenance and Renewal

Trademarks are generally valid for 10 years from the date of registration, but they can be renewed indefinitely as long as they are in use and renewal fees are paid. The key to keeping a trademark valid includes:

• Use in Commerce: Trademarks must be used in commerce within a specific period after registration (often 3-5 years depending on the jurisdiction).
• Monitoring Use: Keep track of your trademark’s use in advertising, packaging, and sales to ensure you have evidence of active use.

Trademark Licensing and Assignment

• Licensing: Trademark owners can license their trademarks to others for use. Licensing agreements typically cover the scope, duration, and compensation for the use of the trademark.
• Assignment: A trademark can be sold or transferred to another party through an assignment. The assignment must be registered with the relevant trademark office.

Exceptions to Trademark Protection

There are some exceptions where third parties may legally use a trademark without permission:

• Nominative Fair Use: When a mark is used to refer to the actual goods or services (e.g., comparing products by name, such as “Better than Nike!”).
• Descriptive Fair Use: When a trademarked term is used in a purely descriptive manner (e.g., using the word “apple” to describe fruit, rather than the brand).

Common Mistakes in Trademark Use

• Failure to Renew: Trademarks must be renewed periodically. Failing to do so may result in the loss of rights.
• Failure to Monitor: Brands should monitor the market to identify unauthorized use and take action quickly. Failure to enforce rights can lead to dilution or loss of exclusivity.
• Incorrect Use of the Mark: Always use the trademark as it was registered, including proper formatting (capital letters, logo usage, etc.).