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Table of Contents
Table of Contents ............................................................................................................................................................. 2
Module Introduction ........................................................................................................................................................ 4
Module Overview and Learning Outcomes...............................................................................................................................4
Module Structure.......................................................................................................................................................................5
Topic 1: Overview of Trademarks ..................................................................................................................................... 6
Evolution of Trademarks ...........................................................................................................................................................6
What is a trademark? ................................................................................................................................................................7
Examples of Trademarks ...........................................................................................................................................................8
Signs that Cannot be Used as Trademarks ..............................................................................................................................12

Check Your Learning 1 .............................................................................................................................................................13

Characteristics of a Trademark................................................................................................................................................14
Assessment of a Trademark ....................................................................................................................................................15
Protection of a Trademark.......................................................................................................................................................16
Check Your Learning 2 .............................................................................................................................................................18
Topic 2: Collective and Certification Marks ..................................................................................................................... 19
What are collective and certification Marks ...........................................................................................................................19
Check Your Learning 3 .............................................................................................................................................................22
Topic 3: Well-Known Marks ............................................................................................................................................ 23

What are well-known marks?..................................................................................................................................................23

Protection of Well-Known Marks ............................................................................................................................................24
Check Your Learning 4 .............................................................................................................................................................25
Topic 4: World-Wide Use of Trademarks......................................................................................................................... 26
Knowledge Nugget: Is it possible to get world-wide protection for a trademark? ................................................................26
Other Regional Trademark Registration Systems ...................................................................................................................27
Check Your Learning 5 .............................................................................................................................................................28
Topic 5: Trademarks and the Internet ............................................................................................................................. 29
Concerns Related to Trademarks in the Virtual World ...........................................................................................................29
WIPO Initiatives to Help Alleviate these Issues.......................................................................................................................31
WIPO’s Recommendations ......................................................................................................................................................32
Check Your Learning 6 .............................................................................................................................................................33
Module Summary ........................................................................................................................................................... 34
Module Quiz................................................................................................................................................................... 36
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Question Set.............................................................................................................................................................................36
Answer Key .................................................................................................................................................................... 38
Check Your Learning ................................................................................................................................................................38
Module Quiz: Answer Key .......................................................................................................................................................41
Module Resources .......................................................................................................................................................... 42

Video Tutorial................................................................................................................................................................. 43
End of Module 4: Trademarks ......................................................................................................................................... 43

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Module Introduction
Module Overview and Learning Outcomes

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Module Structure

This module is divided into five topics. You are required to complete the topics sequentially in order to best meet the module
learning outcomes.

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Topic 1: Overview of Trademarks

Evolution of Trademarks

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What is a trademark?

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Examples of Trademarks

Generally, trademarks composed exclusively of signs or indications that are customary in the current language or may serve
in trade, to designate the kind, quality, quantity, destination, value, geographical origin, or time of production of the good
or service to which the trademark relates cannot be protected.

This section offers some descriptive examples of trademarks.

Each of the above are described in detail below.

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Signs that Cannot be Used as Trademarks

What about signs that can’t be used as trademarks?

In conclusion, there is a wide variety of signs that can be used as trademarks, but in order to be protected as trademarks,
the signs must be distinctive, not deceptive and comply with the other protection requirements established by the law of
the country where protection is sought.

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Check Your Learning 1

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Characteristics of a Trademark

There are two characteristics a trademark must have in relation to specific goods and/or services.

Firstly, it should be distinctive and secondly it should not be deceptive.

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Assessment of a Trademark

For example, the registration of a mere real However, if the image is stylized or is combined
image of a cow for dairy products may be with other verbal or figurative elements, the
considered to lack distinctiveness. sign could then be considered to be distinctive.
Here are some examples of registered
trademarks.

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Protection of a Trademark

To get a trademark known and respected requires considerable investment and usually quite a period of time. Therefore, it
is in the interest of everyone seeking to use a trademark to make sure that it is protected as a valuable piece of intellectual
property.

Well of course they have to rely on trademark laws, but the most common way of protecting a trademark is to
have it registered in the Trademark Register, and many countries make this a condition of trademark
protection. It must first be registered, and once it has been registered it is protected, and its owner is entitled
to prohibit others from using it.

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The initial duration of the protection of a trademark varies from country to country. For States party to the WTO,
the initial duration of protection should be no less than 7 years, as provided by the TRIPS Agreement. In many
countries, the term of trademark registration, and each renewal of registration is ten years. The registration of a
trademark can be renewed indefinitely.

In principle, a trademark registration will confer an exclusive right to the use of the registered trademark. What does the right
of use mean? It means first the right of the owner of the mark to affix it on goods, containers, packaging, labels, etc. or to use
it in any other way in relation to the goods for which it is registered. It means also the right to introduce the goods to the
market under the trademark or to license to another party the right to use the trademark in return for payment.

It follows from the mark’s basic function of distinguishing the goods that the owner must be able to object to the use of
identical or confusingly similar marks in respect of identical or similar goods and/or services in order to prevent consumers
from being misled.

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Check Your Learning 2

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Topic 2: Collective and Certification Marks

What are collective and certification Marks

Trademarks typically identify individual enterprises as the origin of marked goods or services. Some 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 for which a mark is used.

Here you see an example of both, a collective mark and a certification mark. You will see additional examples as you read
along.

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Check Your Learning 3

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Topic 3: Well-Known Marks

What are well-known marks?

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Protection of Well-Known Marks

As you know, there may be companies which intend to take unfair advantage of those well-known marks by creating marks
that are similar or that would create confusion with the well-known ones, thus misleading consumers. To overcome this
problem, the Paris Convention, the TRIPS Agreement, as well as many national laws, have provided for a special protection
of well-known marks.

Continue to read through the text to learn about specifics related to the protection of well-known marks.

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Check Your Learning 4

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Topic 4: World-Wide Use of Trademarks

Knowledge Nugget: Is it possible to get world-wide protection for a trademark?

Many companies wish to use their trademark in many different countries.

Well you can go to each country separately as, like all intellectual property rights, trademarks are territorial rights, which
basically means that their protection is confined to the territory where registration was granted.

However, you have another option.

You can use WIPO’s Madrid System for the International Registration of Marks, which is a convenient and cost-effective
solution for registering and managing trademarks worldwide. By filing a single application and paying one set of fees you
may apply for protection in more than 100 countries. It is important to know that, before you can file an international
application, you need to have already registered, or have filed an application, in your “home” IP office.

Besides the Madrid System, are there other treaties aiming at facilitating formalities for trademarks?

Yes, there are two other treaties, administered by WIPO, which make trademark formalities more user-friendly, by
harmonizing and simplifying certain procedures. The Trademark Law Treaty (TLT), adopted in 1994, and The Singapore
Treaty on the Law of Trademarks was adopted in 2006.

Given below are details for each of these treaties.

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Other Regional Trademark Registration Systems

In addition, there are also several regional trademark registration systems in place, such as the European Union Intellectual
Property Office, the Benelux Office for Intellectual Property and the African Intellectual property organization.

Read through the following details to learn more about each of them.

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Check Your Learning 5

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Topic 5: Trademarks and the Internet

Concerns Related to Trademarks in the Virtual World

Whilst trademark rights are territorial in nature and can be used and enforced within the countries where the rights have
been granted, in the virtual world the use and enforcement of trademarks raises some concerns as highlighted below.

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WIPO Initiatives to Help Alleviate these Issues

The WIPO Joint Recommendation Concerning the Protection of Marks, and Other Industrial Property Rights in Signs, on the
Internet was established in order to help the authorities and courts involved in such conflicts and in all other questions arising
from the contradiction between the principle of territoriality of rights and the global nature of the Internet.

• The provisions aim at providing a clear legal framework for trademark owners who wish to use their marks on the
Internet and to participate in the development of electronic commerce.

• They are intended to facilitate the application of existing laws relating to marks, and other industrial property rights
in signs on the Internet.

Consider the following example and continue to the next screen to read more WIPO’s recommendation with respect to
domain names and trademarks.

With the expansion of Internet and the appearance of lots

of domain names, an important problem concerns the
conflict between trademarks and domain names (user-
friendly Internet addresses for websites). Modern
businesses tend to register their trademarks as domain
names. Looking at our example, while trademark may be
registered and coexist in the internet in different country
code Top Level Domains (ccTLD), this will not be the case if
both sellers would like to register their trademark in the
generic top level domain (gTLD) .com, as the domain
trademark.com is unique and may be registered just for
one of the trademark owners, on a first-come, first-served
basis.

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WIPO’s Recommendations

WIPO undertook an international process to develop recommendations concerning the intellectual property issues
associated with Internet domain names, including the interface between domain names and trademarks and a domain name
dispute resolution.

Continue to read for further details.

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Check Your Learning 6

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Module Summary

“A trademark is a sign that individualizes the goods or services of a given enterprise and distinguishes them from those of
its competitors.”

This module has covered the basics of trademarks and the growing importance in commercial activities. A trademark may
consist of, for example, a word, a logo, a number, a letter, a slogan, a sound, a color, or sometimes even a smell or texture
and which is used to identify the source of goods and/or services with which the trademark is used.

Trademarks are but one area of intellectual property. However they can be extremely valuable and their purpose is to
distinguish a product or a service from other products or services. Trademarks can be owned by individuals or companies
and should be registered at a governmental agency, which is usually referred to as the Trademarks Office. When a trademark
is used in connection with services, it is sometimes referred to as a “service mark”.

Generally speaking, trademarks should be distinctive and should neither be generic nor merely descriptive of the goods or
services they represent. Remember the example given, that the word “vegetable” cannot be registered as a trademark of a
supermarket, since it is certainly descriptive of items which a supermarket sells. In addition, it cannot be registered as a
trademark for carrots, since it is a generic term for carrots. On the other hand, the word “vegetable” might well serve as a
trademark for bicycles since it has little or nothing to do with bicycles.

A trademark registration will confer an exclusive right to prevent all third parties not having the owner’s consent from using,
in the course of trade, identical or similar signs for goods or services, which are identical or similar to those in respect of
which the trademark is registered, where such use would result in a likelihood of confusion. This implies that the registered
(?) trademark can be exclusively used by its owner or with his/her consent, for example, licensed to another party for use in
return for payment.

Some 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 for which a mark is used.

• Collective marks usually belong to a group or association of enterprises. Their use is reserved to the members of
the group or association. A collective mark therefore distinguishes the goods or services of members of the
association from those of other undertakings.

• 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 the origin, mode of manufacture of goods or performance of services,
quality, accuracy or other characteristics, thus distinguishing those goods or services from others not so certified.

• As I mentioned in the module, generally, national legislations provide for protection of collective and/or certification
marks, as well as, for well-known marks. These well-known marks are usually protected, irrespective of whether
they are registered or not, in respect of goods and services which are identical with, or similar to, those for which
they have gained their reputation.

• A main difference between collective marks and certification marks is that the former may be used only by members
of the association which owns the collective mark, while the latter may be used by any end user who meets the
defined standards.

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• Trademarks are also widely used on internet and as domain names. However, this can give rise to confusion since
trademark rights are territorial in nature and can be used and enforced within the countries where the rights have
been granted, on the Internet the use and enforcement of trademarks raises some concerns. The Internet has no
physical boundaries and is globally accessible. Rights in a trademark, used for similar or even identical goods or
services, may in real world coexist in different countries, but their use on the Internet may easily turn into conflicts
of rights. This can lead to trademark infringement, misleading advertising and unfair competition.

• WIPO is actively addressing these issues through recommendations of working groups.

• Increasingly enterprises are seeking to register their trademarks in many different countries. Various regional
trademark registration systems are in place and there are the following international treaties and systems in place
to facilitate registrations in multiple countries. Namely:

• The Madrid System for the registration of Marks

• The Trademark law Treaty

• The Singapore on the Law of Trademarks

• Remember too that all of this effort in protecting trademarks is a sign that enterprises today value the benefits of
trademarks, as indeed the Indian and Roman craftsmen did over 2000 years ago.

• In the next module you will see that geographic indications are signs identifying goods that have a specific
geographical origin and possess a given quality, reputation or other characteristic that is essentially attributable to
that origin.

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Module Quiz
Question Set

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Answer Key
Check Your Learning

ID No Check Your Learning Questions and Model Answers

Question: Which of the following two statements are TRUE about trademarks?

Question: What were the main methods mentioned that a company could use to protect its trademark?

Question: Which of the following situations would be suitable for the use of a collective mark, which for a
3
certification mark and which would not be eligible for either?

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Question: How would you explain to a friend or colleague why a well-known mark deserves protection even though
it may not have been registered?

Question: Which of the following statements concerning the Trademark Law Treaty, the Singapore Treaty and the
Madrid System is TRUE?

6 Question: List three potential problematic issues that arise in the use of trademarks on the internet and describe in
about 50 words how WIPO is helping address the issue of IP and domain names.
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Module Quiz: Answer Key

Question Number Question Correct Answer/s

1 In addition to words, letters, names, abbreviations, and d. All of the above

logos, what other examples are considered trademarks?

2 An example of a deceptive trademark is: a. a label that includes the name of a

region when the product is not really
from that regions (i.e. Bordeaux).

3 One of the 2 main requirements under the Madrid a. A trademark should be distinctive
Agreement is: and should not be deceptive

4 A trademark, which has not been registered, is only b. substantial time has passed which
covered under trademark protection if: gives the trademark a certain
distinctiveness and reputation in the
market.

5 The symbol of a horse to represent a brand of sailboat is c. Distinctive

considered:

6 The owner of a trademark has the right to exclude a. True

others from using it. TRUE or FALSE?

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Module Resources

Legislative Texts

Name Hyperlink

Paris Convention for the Protection of Industrial https://www.wipo.int/treaties/en/ip/paris/

Property (the Paris Convention)

Trademark Law Treaty (TLT) https://www.wipo.int/treaties/en/ip/tlt/

Singapore Treaty on the Law of Trademarks (STLT) https://www.wipo.int/treaties/en/ip/singapore/

The Agreement on Trade-Related Aspects of https://www.wto.org/english/tratop_e/trips_e/trips_e.htm

Intellectual Property Rights (TRIPS Agreement).

Other Texts

Name Hyperlink

WIPO Joint Recommendation Concerning https://www.wipo.int/edocs/pubdocs/en/marks/833/pub833.pdf

Provisions on the Protection of Well-Known
Marks

WIPO Joint Recommendation Concerning the https://www.wipo.int/edocs/pubdocs/en/marks/845/pub845.pdf

Protection of Marks, and Other Industrial
Property Rights in Signs, on the Internet

Uniform Domain Name Dispute Resolution https://www.icann.org/resources/pages/policy-2012-02-25-en

Policy (UDRP)

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Video Tutorial

The following video by Violetta Ghetu introduces Trademarks, their main functions and which signs may serve as
Trademarks.

https://vimeo.com/user2977389/review/366931699/74548c2014

End of Module 4: Trademarks

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