WIPO defines a trademark as a distinctive sign, a symbol that distinguishes the trademark owner’s goods and services from those of competitors. The use of signs to distinguish merchants’ products first became significant with the development of trade, and is now considered a key tool for both businesses and consumers.
It is often said that nowadays a trademark is one of the most valuable assets, if not the most valuable, of an organisation. For consumers a trademark reflects the image of the company and therefore has commercial value.
From the date a trademark is registered with the competent authority, generally the Patent and Trademark Office, the holder has exclusive rights of exploitation. A trademark can be registered for 7 to 20 years and protection can be renewed indefinitely. During this time the owner can use, sell, license or merchandise the trademark, and of course prevent its unauthorised use. As the trademark represents the values of the company it represents, the owner should ensure that no other organisation attempts to be illegally associated with these values by incorrect use of the protected trademark.
In order to maintain their rights, the owner of the trademark must make proper use of the trademark and pay annual fees. If the mark is not exploited for five consecutive years trademark protection is lost.
Representation of a trademark
Most trademarks have a visual sign to distinguish them; this can be virtually any kind of sign and it is impossible to list them. A sign can be made up of words, letters and numerals, devices, coloured marks, combination of letters, or three-dimensional signs.
- words: this includes names, family names, forenames, nicknames, geographical names, as well as any other words or set of words, whether invented or not, and even slogans.
- letters and numerals: a sign could consist of one or more letters, one or more numerals, or a combination of letters and numerals
- devices: these can be drawings or symbols
- three-dimensional signs
Types of trademarks The main kinds of trademark are the following:
When services started to develop nationally as well as internationally, the need to enable consumers to distinguish between different services such as airlines, insurance companies, car rental and so forth becomes crucial. This is recognized in the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks which classifies goods and services.
A collective mark is owned by an association or a group of companies whose members use the collective mark. To enjoy the protection of a collective mark it is necessary to comply with the regulations of the association to ensure compliance with quality standards. A company may also use its own trademark on top of the collective mark.
Any company can register a certification mark as long as it complies with a defined set of standards. Contrary to a collective mark, a certification mark is not owned by an association. It is mandatory that the body that applies for registration is “competent to certify” the products concerned. This protects the public from malpractice.
Grounds for protection
A trademark must be distinctive so that the customer can differentiate it from other similar products. The mark should not a generic term such as ‘furniture’ or ‘table’ nor should it be a descriptive sign, i.e. a sign used to designate origin, quality, etc.
A trademark should also be original. This means that it should not infringe on others’ rights, i.e. copy a registered trademark for the same or similar goods or services. It should not be deceptive or forbidden by the law, nor should it create confusion among consumers or give a false idea of the origin of the product or service, or use signs contrary to public order.
Finally, it must be used, and used properly. If the mark is not used within five years of its registration, anyone with a legitimate interest may ask for it to be cancelled as its non use represents a barrier to the registration of new marks, and consequently to commerce as a whole. Improper use of the mark can also result in the loss of protection. An example of improper use is when people refer to the product by using the trademark. Famous examples of this are the use of Frigidaire, Cellophane, Biro, Nescafe, etc.)
Why protect a trademark? A trademark confers to the owner the exclusive right of exploitation. It is a valuable asset for an organisation as it distinguishes their products and can be used to gain consumers’ trust. Trademarks also have monetary value as they can be sold or licensed.
Registering a trademark can prevent it being misappropriated, and enable the owner to take legal action against anyone using the trademark without authorisation.