The Law of Trademarks internationally is subject to what is known as the “Doctrine of Territoriality”. This means that a Trademark registered or used in one Legal Jurisdiction does not automatically have validity in another Legal Jurisdiction. Indeed, one Legal Jurisdiction may treat its Trademarks in a very different legal manner to another jurisdiction.
This Introduction is, therefore, very much a description of the fundamentals of Trademark Law in a manner which is generalized and not specific to any particular jurisdiction.
What is a trademark?
A trademark is a sign which is able to distinguish the goods and services of an organization from those of its competitors. It can be for example words, logos or a combination of both. The Law expects a trademark to be a marketing tool so that an organization’s customers can recognize its products or services.
In essence, a trademark can be anything, which distinguishes a business from those of other traders. A trademark may be:
- a word or combination of words;
- a logo;
- the shape of products or their packaging;
- the color used to promote goods and services;
- a musical composition used in advertising;
- a graphic user interface for a computer software product.
As long as the trademark is capable of distinguishing a business from other traders or does distinguish a business from other traders (either inherently or through use over the years) then the trademark acts as “a badge of origin” and is protectable.
Trademarks and Goodwill
Goodwill is what brings to a business repeat orders and new business. Existing customers know the businesses name and refer it to others. When a business person says “It has taken years to build up my business.” they probably mean (in law) “It has taken years to build up my goodwill.”
Goodwill is generally embodied in a name, and it is vital for every business to protect their ability to use that name.
Goodwill is a type of intangible intellectual property which attracts and retains customers. Where the goods, which generate goodwill, are sold under a trademark, the trademark and the goodwill become inextricably linked. Once this has been established a company can stop others from using this trademark to stop the “Passing Off” of competing goods and unfairly profiting from the goodwill generated.
Consider the consequences of having to change a business name. This might happen because another company, perhaps in another part of the country or a slightly different market, lays claim to that name, has a registration, and is able to stop the former business using it. Or perhaps another company starts trading under a name so similar to another’s that customers are confused and orders are lost. Indeed, if the new company trades at the lower quality end of the market the former business’ reputation could suffer as a result.
Thus protecting ‘names’ is crucial for the preservation of goodwill.
A Trademark must be:
- Distinctive for the goods and services provided. In other words it can be recognized as a sign that differentiates one organization’s goods or service as different from someone else’s.
The Trademarks below may be familiar. They don’t describe (are not ‘descriptive’ of) the goods or services to which they relate, which is why they are good examples of registerable trademarks.
Trademarks are not registerable if they:
- describe the goods or services or any characteristics of them (the legal term being “descriptive”), for example, marks which show the quality, quantity, purpose, value or geographical origin of the goods or services in question;
- have become customary in the line of trade in question;
- are not distinctive;
- are three dimensional shapes;
- are specially protected emblems (most jurisdictions may specially exclude certain designs);
- are offensive;
- are against the law (for example – promoting illegal drugs); or
- are deceptive (there should be nothing in the mark which would lead the public to think that the goods and services have a quality which they do not).
A registered trademark must usually be renewed every 10 years to keep it in force.
Benefits of Registration
Registering a trademark gives you the owner the exclusive right to use your mark for the goods and/or services that it covers in the jurisdiction in which it is registered.
The owner of a registered trademark shout affix the ® symbol next to it to warn others against using it. However, using this symbol for a trademark that is not registered is often an offence.
A registered trademark:
- deters other from using the trademark without permission (without a “license”);
- produces an Evidential Presumption in Court that the registered owner is, in fact, the owner and that the trademark is, as a matter of law, a trademark;
- provides a legal right to take action against anyone who uses a trademark without the owner’s permission;
- allows Trading Standards Officers or Police to bring criminal charges against counterfeiters if they use the trademark in question;
- is Property – which means it can be sold, mortgaged, lent and licensed.
Protecting unregistered trademarks
Trademarks, or more precisely the goodwill associated with the business conducted under the trademark, is protected via the Common Law Tort (a type of ‘civil wrong’) of ‘Passing Off’. If an organization can prove that it has established, via the use of the trademark, Goodwill in the business associated with that trademark, then this goodwill is protectable. Goodwill is essentially a reputation in the mark.
Thus if another trader ‘passes off’ his goods or services as being a third party’s and misrepresents in some way, either deliberately or innocently, that his goods and services are theirs or they are in some way connected to him or they have endorsed his goods and services, then if the original trademark owner can show that they have or are likely to suffer damage as a result of such use, they will have a remedy in passing off.
Unregistered trademarks should be displayed with the ™ symbol to put ‘the world on notice’ that goodwill is associated with the trademark and that the trademark is owned.
Trademarks and Domain Names
The clash between ownership and use of domain names in cyberspace and trade marks in the analogue world is one of the areas of dispute currently at the forefront of legal debate in relation to the Internet. The issues that arise illustrate the struggle being played out between commercial users of the Internet as they lock horns in an effort to mould the unstructured web of cyberspace into a form that more closely resembles the rules of engagement with which they are familiar. Traditional terrestrial rules of trade mark law are being employed to resolve clashes over domain names with some extraordinary results. In response, those currently charged with a supervisory role in relation to the allocation of domain names have formulated their own policies to deal with the clashes.
Dr. Bandey’s Expertise
As an “Academic Practitioner”, Dr. Bandey is uniquely positioned to not only understand the intersection of different Intellectual Property Laws (Copyright, Patents, Trademarks) but also how those Laws operate and intersect across the world (multi-jurisdictionally).
An expert on “Cybersquatting” Dr. Bandey has a long history of successfully displacing those who would profit unfairly and unlawfully from occupying another’s Domain Name.