Trademarks

A trademark is a sign used to identify certain goods and services as those produced or provided by a specific person or enterprise. Hence, it helps to distinguish those goods and services from similar ones provided by another. Apple, Microsoft, IBM, Coca Cola are all trademarks that identify specific businesses.

Trademarks may consist of:

• words | Apple, Nomadic, Alpine.
• combination of words | Coca-Cola.
• letters and abbreviations | BMW, IBM.
• numbers or numerals | 7.11, 3M.
• names | Ford, Mercedes or Armani.
• abbreviations of names | YSL, for Yves St-Laurent.
• drawings | the apple logo or the logo of Shell oil company
• 3D signs such as the shape and packaging of goods | shape of the Coca-Cola bottle
• combination of colors or single colors | the red color of Vodafone m company
• Music identity | the distinctive sounds of BBC news
• Non visible signs, such fragrances, may constitute trademarks

In all cases, the trademark must be distinctive: it must be capable of distinguishing the goods or services with which it is used. A name which is purely descriptive of the nature of the goods and services that are offered may not constitute a valid trademark. For example, Apple may serve as a trademark for computers but not for actual apples. However, a given trademark may not be distinctive from the outset, but may have acquired distinctive character or “secondary meaning” through long and extensive use.

Types of Trademarks

Collective marks are marks used to distinguish goods or services produced or provided by members of an association. Collective marks are marks used to identify the services provided by members of an organization (e.g. UAW for United Auto Workers).

Certification marks are marks used to distinguish goods or services that comply with a set of standards and have been certified as such (e.g. The Woolmark symbol to show that products are made from 100% wool and comply with performance specifications set down by the Woolmark Company. It is registered in 140 countries and is licensed to manufacturers who are able to meet these quality standards in 67 countries).

Protecting a Trademark

In order to protect a trademark registration is needed. Trademarks are territorial rights. This means that they must be registered separately in each country in which protection is desired. Note that, unless a given trademark is protected in a specific country, it can be freely used by third parties. Moreover, trademark protection is in general always limited to specific goods and services (unless the trademark in question is a well-known or famous trademark).

This means that the same trademark can be used by different companies as long as it is used for dissimilar goods or services. Almost all countries in the world maintain a Register of Trademarks, at the appropriate trademark office.

Registration is not, however, the only way of protecting a trademark: unregistered trademarks are also protected in some countries, but in a less reliable form.

A trademark owner is given the exclusive rights:

• to use the trademark to identify his goods or services
• to prevent others from using and marketing the same or a similar trademark for the same or similar goods or services
• to authorize others to use the trademark, (e.g. by franchising or licensing agreements) and in return for payment

To summarise: