PATENT INFORMATION AND DOCUMENTATION
CllAPTER 6 TRADE1\1ARKS
6.5 Acquisition of Trademark Rights 6.6 Use Requirements 6.6 Use Requirements
6.6.1 Introduction 6.6.2 Meaning of "use"
6.6.3 Removal for non-use
6.6.4 Deceptive or confusing use 6. 7 Conflicts with prior rights
6.8 Registration Procedure 6.8.1 Introduction
6.8.2 Application for registration 6.8.3 Examination as to form 6.8.4 Examination as to substance 6.8.5 Opposition
6.8.6 Registration and publication 6. 9 Duration of Protection
6. 10 Renewal 6.11 Termination
6.11.1 Surrender 6.11.2 Invalidation 6.11.3 Removal 6.12 Scope of Protection
6.12.1 Territorial 6.12.2 Temporal 6.12.3 Protected acts
6.12.4 Exceptions to the scope of tradcmark protection 6.13 Parallel Importation
6.14 Product Piracy and Counterfeiting 6.14.1 Introduction
6.14.2 Remedies and enforcement 6.15 Transfer of Trademarks
6.16 Licensing
6.17 International Agreements Affecting Trademarks 6.17 .1 The Paris Convention
6.17.2 The Madrid Agreement 6.17.3 The Nice Agreement 6.17.4 The Vienna Agreement 6.17.5 The Lisbon Agreement
TRADEMARKS 145 6.1 Introduction
A trademark is a sign which serves to distinguish the products of one enterprise from the products of other enterprises. "Product" means any item which is sold and, therefore, needs to be distinguished, in order to allow the customer to make his choice.
This choice is greatly facilitated if products are offered bearing trademarks because the customer can identify a particular product by means of the trademark. Trademarks are particularly important for consumer goods, for example, ail the articles which fulfil the daily necds of a houschold.
Closely related to trademarks are service marks. They have the purpose of disting
uishing the services of an enterprise from the services of other enterprises. "Service"
means, for example, the offering of cars for rent, the organizing of travel, the offering of insurance coverage, the repairing of ail kinds of articles, the cleansing and washing of textiles. The economic importance of services has increased during recent years. There
fore, service marks have become more important.
ln connection with trademarks, two special kinds of marks have to be taken into account, namely, collective marks and certification marks.
A collective mark usually be longs to a group or association of enterprises; its use is reserved for the members of the group or association. Collective marks serve to distingu
ish characteristic features of the products offered by those enterprises, for example, the compliance with certain quality standards.
Certification marks have the same purpose as collective marks; however, their use is normally not restricted to the members of a defined group or association of enterprises.
Instcad, they may be used by any enterprise which fulfils the conditions laid down with respect to the use of the certification mark.
Among the countries of the world there are none in which trademarks are not used and none in which trademarks are not protected.
The exclusive right to use a trademark is typically acquired by registration, but in a few countries that exclusive right is attained by first use.
6.2 Scope of Trademark Law
The object of most trademark laws is to permit an enterprise by registering its marks to obtain an exclusive right to use, share, licence or assign a mark. For the purpose of dclineating the scope of trademark law it is important to identify: (a) the kinds of signs which may be registered as trademarks; (b} the products for which registered marks may be used; and (c) the categories of mark which the law protects.
6.2.1 Signs which may serve as trademarks
ln those countries in which the basis of trademark protection is registration, the principal requirement of the law is that a mark be visible rather than audible or olfactory.
These latter categories of signs may be protected through passing off or unfair competi
tion law, provided an enterprise can establish the requisite reputation in such signs.
...
146 BACKGROUND READING MATERIAL ON INTELLECTUAL PROPERTY
However, in some countries the distinctive features of radio and other advertising may be offered protection as service marks.
Visible signs which may be registered include existing or inverted words, letters, figures or designs or combinations of each of these. Examples of registered marks in
clude:
existing words: "Triumph" for automobiles, "Apple" for computers;
arbitrary or fanciful designations: "Coca-Cola", "Kodak", "Nikon",
"Xerox";
names: "Ford'', ''Peugeot", "Kelloggs";
slogans: "We try harder" for a car rentai agency, "Every Body necds milk"
for a dairy promotional service, "Fly Me" for an airline;
devices: the star for "Mercedes Benz" automobiles, the "flying lady" for
"Rolls-Royce" automobiles;
numbcrs: the "4711" cologne;
letters: "RCA", "MG", "VW", "BMW";
pictures or symbols: the alligator for "Lacoste" shirts and dresses, the grey
hound for ''Greyhound" buses.
In some countries the shapes of goods or their containers (bottles, wrappers, envclopes, packaging and similar three-dimensional signs) are registrable as trademarks.
6.2.2 Products to which trademark protection extends
The term "trademark" has traditionally applied only to marks which are applied to goods. With the development of multinational enterprises offering standardized airline, hotel, tourist and restaurant services, trademark protection in some countries has been extended to marks used in association with such services. This protection is accomplished either, by specific reference to "service marks", or by expanding the dcfinition of trademark to include services, such as in s.2(xi) of the Model law for English Speaking African Countries on Trademarks, published by WIPO in 1979.
6.2.3 Collective marks and certification marks
Trademarks typically identify individual enterprises as the origin of marked goods or services. Sorne 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 with which a mark is used.
The following are the common features in the relevant provisions of national law on this topic:
(a) collective marks
A collective mark may be owned by an association which itself does not use the collective mark but whose members may use the collective mark; typically, the
TRADEMARKS 147 association has been founded in order to ensure the compliance with certain quality standards by its members; the members may use the collective mark if they comply with the requirements fixed in the regulations concerning the use of the collective mark. Thus, the fonction of the collective mark is to inform the public about . certain particular features of the product for which the collective mark is used. An enterprise entitled to use the collective mark may in addition also use its own trademark.
The regulations concerning the use of the collective mark normally have to be included in an application for the registration of the collective mark and any modifications to the regulations have to be notified to the Trademark Office. In several countries (for examplc, the Federal Republic of Gcrmany, Finland, Nor
way and Sweden and Switzerland), the registration of a collective mark may be cancellcd if that mark is used contrary to the provisions of the regulations or in a manner which misleads the public. Collective marks, therefore, play an important rote in the protection of consumers against misleading practices.
The Paris Convention contains provisions on collective marks in its Article 7bis.
Those provisions, in particular, ensure that collective marks are to be admitted for registration and protection in countries other than the country where the associa
tion owning the collective mark has been established. This means that the fact that the said association has not been established in accordance with the law of the country where protection is sought is no reason for refusing such protection. On the other hand, the Convention expressly states the right of each member State to apply its own conditions of protection and to refuse protection if the collective mark is contrary to the public interest.
(b) certification marks
The certification mark may only be used in accordance with the defined standards.
The main difference between collective marks and certification marks is that the former may be used only by particular enterprises, for example, members of the association which owns the collective mark, while the latter may be used by anybody who complies with the defined standards. Thus, the users of a collective mark form a
"club" white, in respect of certification marks, the "open shop" principle applies.
An important requirement for the registration of a certification mark is that the entity which applies for registration is "competent to certify" the products con�
cerned. Thus, the owner of a certification mark must be the represcntative for the products to which the certification mark applies. This is an important safeguard for the protection of the public against misleading practices.
The definition of "certification mark" is not the same in ail countries. In the United States of America, for instance, a certification mark may not be used by anybody who complies with the defined standards, but only by enterprises which have been authorized by the owner of the certification mark,to use that mark. Thus, in the United States of America, the difference between a certification mark and a collec
tive mark is smaller than in other countries; it only relates to the purpose of those
148 BACKGROUND READING MATERIAL ON INTELLECTUAL PROPERTY
two kinds of marks: the certification mark refers to certain standards of products or services, while the collective mark refers to the membership of its users in a particular organization.
(International Bureau of WIPO, Comparalive Trademark Law, BTMOl, p.3; BTM04 Rev. p.9;
BMT06, pp.8-9]