MODULE II Trademarks

DEFINITIONS
TRADEMARK: A trademark is a sign capable of distinguishing the “goods” or “services” produced
or provided by one enterprise from those of other enterprises. Any distinctive word, letter, numeral,
drawing, picture, shape, color, logotype, label, sound, scent or combination used to distinguish
goods or services may be considered a trademark.
CERTIFICATION MARK: A certification mark is a mark indicating that the goods or services in
connection with which it is used are certified by the proprietor of the mark in respect of a given
standard or characteristics such as origin, materials, mode of manufacture of the goods or
performance of services, quality or accuracy.
COLLECTIVE MARK: A collective mark is defined usually as a sign capable of distinguishing the
geographical origin, material or any other common characteristics of goods or services that belong
to different enterprises or individuals and are using it collectively under the control of an owner.
The owner may either be an association of which those enterprises or individuals are members or
any other entity, including a public institution or a cooperative.

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DEFINITIONS (CONTINUED)
DOMAIN NAMES: An internet domain name is a name associated to an internet IP
address and it is meant to facilitate access to a specific virtual place on the net for
net-surfers (e.g. a website). There are specific rules to properly register and use
domain name, that have similar rationale as the rules set forth for trademarks.
TRADENAMES: Enterprises may own and use one, several or many different
trademarks to distinguish their goods and services from those of their competitors.
However, they also need to distinguish themselves from other enterprises. For that
purpose, they will adopt a trade name. Trade names, and trademarks commonly
share the fact that they exercise a distinguishing function. However, unlike trademarks,
trade names distinguish one enterprise from another, quite independently of the
goods or services that the enterprise markets or renders, at least as a general
principle.

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DEFINITIONS (CONTINUED)
UNREGISTERED TRADEMARKS: Unregistered trademarks are signs used in the course
of trade by one undertaking to distinguish his goods or services. Generally, they are
protected to the extent that they are used by the proprietor and, as a consequence,
to the extent that they are known to the relevant public as a distinctive sign of a
certain undertaking.

REGISTERED TRADEMARKS: Registered trademarks are marks that have be applied for
and accepted for registration by trademark office(s) if such marks comply with
registrability requirements (such as availability, distinctiveness and compliance with the
law)

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TRADEMARK LAWS
NATIONAL LAWS
Trademarks are governed by the principle of territoriality and as such national
trademark law apply delimiting the scope and requirements for trademark
protection. National trademark offices are bound by national laws.
REGIONAL LAWS
Agreements between neighboring States may derogate to the aforementioned
principle allowing for regional coverage of trademark rights (one example is the
European Trademark system which is managed by the European Trademark
Intellectual Property Office (EUIPO)

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TRADEMARK LAWS
INTERNATIONAL TREATIES
- The Paris Convention which established the principle of national treatment and conventional
minimum standard of protection;
- The Nice Agreement establishing an international classification of goods and services;
- The TRIPS Agreement which heightened the minimum level of protection that each country has
to provide to the nationals of other member countries (for ex. Regarding well-known marks;
- The Trademark Law Treaty aiming at more user-friendly trademark registration systems
through the simplification and harmonization of procedures and removal of pitfalls; and
- The Singapore Treaty further fostering the the harmonization of administrative trademark
registration procedures
- The Madrid system (described hereafter)

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THE MADRID SYSTEM
- Governed by two treaties administered by WIPO: the Madrid Agreement, concluded
in 1891 and the Madrid Protocol concluded in 1989.
-The Madrid system makes it possible to protect a mark in a large number of countries
by obtaining an international registration, which has the same effect in each of the
Contracting Parties that has been designated as if the trademark was applied for
registration in each of them.
- As of March 2020, 122 countries are member to the Madrid system (see:
[Link]

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ADVANTAGES OF MADRID SYSTEM
-One application, in one language, one set of fee in one currency instead of filing
separately in the trademark Offices of the various Contracting Parties in different
languages and paying a separate fee in each Office;
-Same protection as national trademark application;
- No need to wait for the Office of each Contracting Party in which protection is
sought to take a positive decision to register the mark: if no refusal is notified by an
Office within the applicable time limit (12 or 18 months) the mark is protected in such
Contracting Party;
-Easy procedure for payment of fees, adding countries and for renewal

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THE INTERNATIONAL TRADEMARK REGISTRATION
PROCEDURE

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MADRID SYSTEM- KEY CONSIDERATIONS
- Applicants must weight the advantages of filing an international tardemark
application vs. National or regional trademark applications;
- In partiuclar applicants must be aware of the crucial need to perform trademark
availability checks so as to reduce the risk of “central attack”. International
trademark applications are dependent on the basic mark for 5 years;
- The effects of dependency or central attack can be mitigated by another concept
called “transformation”. This permits an International registration to be transformed
into individual national applications in the designated countries, while retaining the
date of the original International registration.

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CRITERIA OF REGISTRABILITY FOR TRADEMARKS
Three registrability requirements:

1- FUNCTION OF THE MARK AND DISTINCTIVENESS:

The first kind of requirement relates to the function to distinguish the products or
services of one enterprise from the products or services of other enterprises.
2- PERMISSIBLE BY LAW (NOT DECEPTIVE OR CONTRARY TO PUBLIC ORDER):
The second kind of requirement relates to the possible harmful effects of a
trademark if it has a misleading character or if it violates public order or morality.
3- AVAILABILITY:
The third kind of requirement relates to the existence of earlier rights of third
parties, which may prevent the registration of the trademark.

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DISTINCTIVE SIGNS
Distinctive signs:
Words : APPLE
Stylized word marks:
Three-dimensional marks:

Color marks:

Sound marks

Taste, smell and touch marks if represented graphically

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NON-DISTINCTIVE SIGNS
Descriptive signs:
Descriptive signs are those that serve in trade to designate the kind, quality, intended purpose,
value, place of origin, time of production or any other characteristic of the goods for which the sign
is intended to be used or is being used. These are not registrable as trademarks

Generic terms:
A sign is generic when it defines a category or type to which the goods belong . (ex: a chair)

Signs merely illustrative, ornemental or reproducing shape of a product

Letters, numerals and basic geometrical shapes

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EXCLUSIONS FROM REGISTRATION

Deceptive marks:
Trademarks that are likely to deceive the public as to the nature, quality or any other
characteristics of the goods or their geographical origin, in the interest of the public,
do not qualify for registration.
Signs contrary to public order or morality
Signs identical or similar to State emblems, official hallmarks, and emblems of
intergovernmental organizations
Signs not constrasting with earlier trademarks or other distinctive signs (lack of
availability or risk of confusion)

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TRADEMARK RIGHTS
By way of registration, the owner of the trademark acquires three sorts of rights:
i) the exclusive right to use the trademark
The owner of a registered trademark has the exclusive right to use it in the course of
trade. “Exclusive” means that the owner is the only who can use the trademark and in
turn is entitled to prevent third parties from using it.
ii) the right to oppose the registration of an identical or similar trademark
iii) the right to dispose of the trademark as an object of property.

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TRADEMARK RIGHTS: LIMITATIONS
Bona-fide use:
The trademark owner’s right to prevent third parties from using his mark can be restricted by
the legitimate interests of others. A provision is contained in many trademark laws states that
the registration of the mark does not confer on its registered owner the right to preclude third
parties from using bona fide, for example, their names, addresses, or pseudonyms.
Trademark listing:
The trademark owner also cannot prevent third parties who are not his competitors from
referring to his trademark by acts such as the listing of the mark in a compendium of
trademarks, or from using it in newspaper articles or in books or other publications or to
indicate compatibility with another product provided such use cannot be interpreted as an
endorsement or creating confusion as to the origin pf the product or service.

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TRADEMARK RIGHTS: LIMITATIONS
First sale doctrine:
When the trademark owner has launched a product on the market under his mark, he cannot
object to further sales of the product in the course of trade. This is the essence of the so-called
principle of exhaustion of the trademark right or first-sale doctrine.

Exhaustion and parallel imports:

“Parallel imports” concern the importation of a genuine product by a third party and without
the permission of the owner of the IP right (ex: the trademark) in the country into which the
product is imported.
Some countries do not allow objections to parallel imports of products marketed in a foreign
country by the trademark owner or by a third party with his consent. Other countries do allow
such parallel imports to be objected to, namely by applying the principle of territoriality of
rights.

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TRADEMARK RIGHTS: LIMITATIONS AND USE
Right to oppose the registration of a mark: The owner of a registered trademark may oppose
trademark applications made by third parties which relate to an identical or similar sign, if an
opposition proceeding is provided for, and/or to take legal actions for the invalidation of
identical or similar trademarks that have been already registered.
Assignment: Trademarks are assets that can be transferred (on a natural’s person death or
more commonly by assignment following a purchase contract). The change of ownership must
be recorded.
Licensing and franchising: Trademark owners enjoy the right to license (through license or
franchise agreements) the use of their marks. Terms of license can be exclusive and subject to
payment of royalties.
Coexistence agreements: These agreements establish to what extent and under what
conditions each trademark can be used by its proprietor and, by doing so, conclude existing
conflicts between the parties and/or prevent future ones.
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TRADEMARK ENFORCEMENT
Cease and desist letters
If you are faced with infringement of your trademark rights, you may choose to begin
by sending a letter to the alleged infringer informing him/her of the possible existence
of a conflict. In writing such a letter, the assistance of a trademark lawyer is
recommended, considered that, under certain circumstances, a threat to sue for
infringement may be considered illegal (e.g. under unfair competition law).
Sending a cease and desist letter may also be avoided if sending such letter may
prompt the infringer to destroy evidence of counterfeiting or take precautions to avoid
a search order be issued.

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TRADEMARK ENFORCEMENT
Search orders
If your business considers the infringement to be willful and knows the location of the
infringing activity, then it may wish to take surprise action by obtaining, with the help
of a trademark lawyer, a search and seize order, which is available in some countries
(usually, from a competent court or the police), to conduct a raid without prior notice
to the allegedly offending company/person.

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TRADEMARK ENFORCEMENT
Injunctions
Injunctions are among the most effective remedies available to trademark owners.
They can be of two kinds: provisional and definitive. These measures may be granted,
depending on the jurisdiction, by judiciary or administrative authorities. Provisional
measures can be obtained in case of infringement or threat of infringement without
delay, at the end of an urgent, summary proceeding. Definitive injunctions are
awarded at the end of an infringement proceeding, generally held in front of a civil
court.

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TRADEMARK ENFORCEMENT
Damages and other civil remedies
The infringer may be sentenced to pay damages to the trademark owner. Generally,
the right holder can obtain a sum which is adequate to compensate him for the actual
damage that he has suffered because of the infringement only if the infringer did
know or had reasonable grounds to know that he was violating someone else’s
trademark rights.
Judicial authorities may order, upon request of the trademark owner, that infringing
goods and materials be destroyed or disposed of outside the channels of commerce
without compensation of any sort.
In order to prevent the importation of counterfeit trademark goods, measures at the
international borders are available to trademark owners in many countries through
the national customs authorities, these are called border measures.

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TRADEMARK ENFORCEMENT
Online enforcement
Apart from other enforcement mechanisms available for off-line situation, unauthorized use of
a trademark on the Internet can be addressed by filing take down notices.
Ecommerce and social media platforms may be liable as Internet Intermediaries or Internet
Service Providers if they fail to take action and remove access to IP infringement contents they
make available on line.
Criminal remedies
Most trademark laws provide for criminal sanctions for trademark infringement (fines and jail
terms). However it is frequent for these criminal remedies to lack deterrence.
There is a need for heightened enforcement in particular considering new technological
developments facilitating the trade of counterfeit products (bitcoin, darknet, individual parcels
etc.)

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