CUBT215: INTELLECTUAL PROPERTY RIGHTS &

BIOTECHNOLOGY

INTRODUCTION TO INTELLECTUAL PROPERTY &

RIGHTS

TENDAI WALTER SANYIKA

CUT, DEPARTMENT OF BIOTECHNOLOGY

BLOCK 11, ROOM 10

waltersanyika@yahoo.com; wsanyika@cut.ac.zw
TRADE MARKS
 Objectives
1. To define trademarks.
2. To explain the requirements for trademark
protection.
3. To distinguish between the different kinds of
marks.
4. To Explain the rights provided under trademark
protection.
5. To describe the spectrum of trademark
protection.
6. To explain the different kinds of trademark
infringement.
7. To explain the remedies on infringement.
The Power of Trademarks
 Origins of Trademarks
• Marks or symbols have been found on ancient
artifacts discovered in the Mid and Far East.

• Used in medieval (ancient) times by members of

unions to identify the work of craftsmen within the
union.

• Employed by Anglo-Americans to prevent “palming

off” (tricking; misleading) by junior producers
trading on the goodwill of senior producers.
 Characteristics of Trademarks
• A trademark is always associated with
commercial activity.

• Trademarks are usually appropriated (acquired)

through adoption and prior use.
‒ May also be obtained on the basis of intent to use.
 Why Do We Need Trademarks?
• Consumers tend to buy well known brands & recognize
brands by their trademarks.

− Prevent consumers from being misled or confused by use of

similar names & other identifiers.
− Consumers may rely on source as an indication of quality.

• Prevent businesses from stealing goodwill others have

generated by creatively & consistently identifying &
marketing their products.

• Encourages investment in quality & service by protecting

investment in creating favorable reputation.
 Goals of Trademarks
• Prevent mistake, deception, and confusion with
regard to the origin of goods.

• Identification of goods or services.

• Marketing or competitive advantages.

• Protect the public from unscrupulous vendors.

• Protect a prior user’s good will.

 Trademarks Vs Brands
• Brands are reputational, intangible assets based on
powerfully held beliefs. They drive customer perceptions.
– They drive the understanding of value in a product or company
– They drive, most importantly, customer loyalty.
• Brands typically are made up of various elements, eg.,
name, logo, graphics, catchphrase, colour, sound, taste, etc.
– Intellectual property rights provide legal protection for some of
the most important elements of a brand, e.g. the name, logo,
design, domain name and sometimes the product itself.
• A brand can be a trade name, a sign, symbol, slogan or
anything used to identify and distinguish a specific product,
service or business.
– Can also be a ‘promise of an experience’
– Conveys to consumers a certain assurance as to the nature of the
product or service they will receive and also the standards the
supplier or manufacturer seeks to maintain.
 Sources of Trademark Law?
• Lanham Act.
• State trademark statutes.
• Common law.
 Sources of Law of Trademarks
• Unlike Patents and Copyrights, there is no express
constitutional grant of power to regulate this form of
intellectual property.

• In early American history, the states grew their own

complex and sophisticated body of trademark common law.

• Congress made various attempts in 1870 and 1876 to

federalize the law of trademarks, but these attempts were
deemed unconstitutional by The Trademark Cases (1879).
‒ Held that Congress had no power to regulate purely state matters
such as trademark rights.
 Successful Attempts at Federalization
• In response to The Trademark Cases, US Congress passed
trademark statutes in 1881 and 1905.
– Both addressed interstate use of trademarks
• Congress passed the Lanham Act in 1946, the most recent
substantive revision of trademark legislation.
– The Lanham Act does not expressly create new rights (caveat -
federal cause of action),
– Nor does it codify common law
– Instead the Act provides a means of federal enforcement,
through registration, of state trademark rights.
• The Lanham Act was extensively amended by the
Trademark Law Revision Act of 1988.
– Introducing federal registration of trademarks on the basis of an
intent to use the mark, in addition to actual use of marks.
 US vs Foreign Trademark Law?
• In the US, TM ownership derived from “use of a
mark in commerce”.
– First to user to mark to sell product or service has superior rights
over subsequent user of same or similar mark in connection with
same or similar goods or services.
– Selecting mark not enough - must use to identify product or
service available for sale.
– Rights limited to area in which trademark is used.

• Other Countries
– First to file (register) has rights.
– Use not necessarily required before filing.
 Trade Mark

• “Any word, name, symbol, or device, or any

combination thereof used by a person to identify
and distinguish his or her goods from those
manufactured or sold by others” (15 U.S.C.
§1127).
− Identifies a brand of product or service.

• Since businesses often invest substantial

amounts of time & money building brand
recognition, it is important to protect trademark
rights.
 Trade Mark
• A name of an enterprise or a Mark capable of being
represented graphically, distinguishing the goods or
services of one person from those of others.
– E. g., LUX, Godrej, TVS ,Telco, 555, APPLE
• Trade Mark can be a:
• Sign , words, letters, numbers,
• Drawings, pictures, emblem,
• Colours or combination of colours,
• Shape of goods,
• Audio: Sounds, Musical Notes
• Olfactory: Smells
• Graphic representation or packaging or
• Any combination of the above
……….. as applied to an article or a product.
 Requirements For Trademark
Protection

• Inherent Distinctiveness.

• Acquired secondary meaning.

• Nonfunctionality.

• Should be trademarkable.
 Distinctiveness
• Distinctive marks identify goods or services as originating
from a particular company, and consequently distinguish
those goods or services from competitors’ goods or
services.

− Have little or no descriptive function;

− Operate primarily to identify a product source.

• Inherently distinctive: Marks that are unique (made up) or

very original.

‒ Secondary Meaning: Marks that become distinctive due to TM

owner’s efforts to create distinctiveness (long-term use & public
recognition).
 Distinctiveness
• A fundamental requirement of the nature of trademark.
• Anything claiming protection under trademark principles
must be capable of:
‒ Identifying the particular goods and services with which it is
used, and
‒ Distinguishing those goods and services from the goods and
services of others in the marketplace.
• Distinctiveness identifies the source of origin of the
product.
• Categories (Distinctiveness Spectrum) of marks of generally
increasing distinctiveness:
– (1) generic
– (2) descriptive
– (3) suggestive, and
– (4) arbitrary and fanciful marks
 Degree of Distinctiveness

• Coined/Fanciful.
‒ Strongest protection.
• Arbitrary
• The more distinctive a • Suggestive
mark, the greater the • Descriptive
protection it receives. − Weak protection
− Only protected if having
secondary meaning
• Generic
− No protection
 Degree of Distinctiveness:
Coined, Fanciful, Arbitrary Marks
• No relationship to the nature of goods or services.

− Coined: Exxon, Kodak, HaagenDazs.

− Arbitrary: Apple (computers).

• Strongest marks – greatest protection.

 Degree of Distinctiveness:
Suggestive Marks
• Suggest rather than describe some aspect of the goods or
services.

– Coppertone (sunscreen), Microsoft (software company).

• Strong trademark protection since they don’t actually

describe products or services they identify, but can be
good for marketing since they suggest products they
identify.
 Degree of Distinctiveness:
Descriptive Marks
• Describe some quality or characteristic of goods
or services

– “Apple” brand apple juice

– “The Band”

• Not protected unless “secondary meaning”

acquired.

− Presumed if 5 years continuous use. 15 U.S.C. §1052

 Degree of Distinctiveness:
Personal Names
• Do not function as TM unless secondary meaning.

− Curb Records, Geffen Records.

• Names identify a person rather than a product or

service.

• Same for geographic names.

− Tennessean (newspaper), Nashville Network. These have aquired

some secondary meanings.
 Degree of Distinctiveness:
Band Names As Trademarks
• Choose name carefully – try not to infringe existing
trademarked names.
− Band named Verve had to change name to The Verve due to
existence of record label, Verve Records.
 Degree of Distinctiveness:
Band Names As Trademarks
• Important to consider foreign trademarks as well if you
might sell your products or services abroad.
• UK band The Charlatans changed to The Charlatans UK in
U.S. to avoid confusion with American 6os band with same
name.
 Degree of Distinctiveness:
Band Names As Trademarks
• When using someone’s name as a trademark:
‒ Important to address who owns name & who has right
to use if group breaks up or membership changes
(ownership issues).
− Does mark belong to group, to members (collectively or
individually) or someone else?
− Steppenwolf former bass player allowed to use name to
describe himself as "former member of Steppenwolf,"
but agreed not to separately record or perform under
name.
− Ike vs Tina Turner.
− Ike had all the rights.
− Quite a sad story.
 Degree of Distinctiveness:
Generic Marks
• Do not function as
trademarks.
− Eg. Painkiller.

• Describe type of
product rather than a
particular brand.

• Genericide: A term
becomes so generic as
to lose protection.
 Secondary Meaning
• Provides for trademark protection of marks that are not
inherently distinctive.
– Descriptive marks usually rely upon special proof of
distinctiveness before protection will be afforded by common law
and statute.
• Descriptive marks must be shown to have acquired
customer recognition (secondary meaning), which serves
primarily to identify the source of the products or services,
and not merely to describe their nature, quality,
characteristics, ingredients, or geographic origins.
• Generic marks .
‒ Constitute the very product and, therefore,
‒ Cannot be registered or appropriated (used) exclusively to one
manufacturer’s use,
‒ Even upon a showing of secondary meaning,
‒ Because competition would be unjustifiably impaired.
 Nonfunctionality
• Trademark protection is granted to symbols or
features that are not functional.

• Protection of functional features would deprive

producers of the right to use those features
necessary to make a product work.

• Doctrine of functionality:
– If a feature is required to perform a particular utilitarian (utility)
function, and if there are insufficient commercially viable
alternatives to perform the same function equally well, no single
producer will be allowed to claim exclusive rights in the feature.
 Kinds of Trademarks
Types of Marks
• Marks on goods (consumables).
• Device Marks (identifies a device).
• Service Marks (identifies a service).
• Certification trademark (endorsement mark).
• Collective Marks (identifies goods of a group of
people).
• Well known marks vs ordinary marks.
• Trade Names (any alternative name that identifies
a company but differs from that registered).
 Trademarks & Types of Marks
• Trademark:
– A symbol, logo, word, sound, color, design, or other
device that is used to identify a business or a product
in commerce.
• It has a longer life than a patent.
• It grants a business exclusive rights to a
trademark for as long at it is actively using it.
• ® Registered trademark
• ™ Intent to use application filed for product
• SM Intent to use application filed for services
 Trademarks & Types of Marks
• Trademark = word, phrase, symbol, or design to
set your product apart.
• Service mark = same as trademark, but for a
service.
– Rights are reserved exclusively for owners for 17 years…can be
renewed…lasts indefinitely.
– There are advantages to owning them on the U.S. Patent &
Trademark Office Principal Register.
– TM = unregistered trade mark, SM = unregistered service mark,
® = registered trade mark.
• Service Marks include banking, education,
finance, insurance, real estate, entertainment,
repairs, transport, conveying news and
information, advertising, etc.,
 Trademarks
Types of Marks: Service Marks
 Trademarks
Types of Marks: Collective Mark
• Collective Mark is a Mark that distinguishes the
goods or services of members of association from
marks of other undertakings
• Who owns collective Mark?
– Association or groups of persons.
• It could be manufacturers, producers, suppliers,
traders or other profession bodies: Eg.,
‒ Institute of chartered accountants.
‒ Test cricketers association etc.
 Trademarks
Types of Marks: Certification Trade Marks
• Certified/ certification by the Proprietor as having
characteristics like geographical origin, ingredients, quality.
• An endorsement of quality/ qualities.
– E.g., AGMARK, WOOLMARK.
– Certification mark cannot be used as a trade mark.

» Woolworths simply certifies that the goods on which

it’s mark is applied are made of 100% wool.
» It is registered in 140 countries and
» Licensed to the companies which assure that they will
comply with the strict standards set out by the
Woolmark company , the owner of the mark.
What Can Be Used As a Trademark?

• Names - most commonly used

– Coca-Cola

– Starbucks

– Nike

– The Beatles
Trademarks & Service Marks
 What Can Be Used As a Trademark?

 Slogans

 “Absolutely positively overnight”

 "Tastes Great, Less Filling”

 "Good to the Last Drop”

 "Breakfast of Champions”

 "Where's the Beef?"

What Can Be Used as a Trademark?

Slogans: “Just Do It”

 What Can Be Used As a Trademark?

 Logos
 What Can Be Used As a Trademark?

 Band Logo Examples

 What Can Be Used As a Trademark?

 Record Label Logo Examples

What Can Be Used As a Trademark?

• Other Identifiers:

– Sound
– Eg., Signature phrases used to introduces a
wrestler to the crowd.

– Color:
– Rarely, but possible if not necessary for particular
product.
– Eg., Telecel has gone red.
 Trademarks
• Must be graphically represented.
• Must be distinctive / distinguishable.
• Must not be descriptive.
• Must not be deceptively similar to known /well-
known marks /Generics.

Avoid:
Geographical Indications / Divinity/
National Leaders / Heroes / Symbols /
Congratulatory words
 What Is Protected & What’s Not?
• Right to use TM in relation to goods/ services as
registered are protected.
• If TM consists of several parts, protection is for TM
as a whole.
• State Emblems, Official Hallmarks, Emblems of
Intergovernmental Organizations cannot be used as
TMs.
 Not Trademarkable?
– Anything immoral.

– Anything deceptive.

– Anything that uses official symbols of the U.S.

or any state/municipality such as the flag.

– Anything that uses a person’s name or likeness

without their permission.
 Registration of Trade Mark
• Trade Marks are registered by national trade
mark registries (offices) and are valid in that
country (territorial).
– Eg. USPTO.
• Registration is made after examination and
publication.
‒ To avoid conflicts.

• Period of registration is for 10 years but can be

renewed indefinitely.
 US Federal Registration Process

 File Application.

 PTO examines for registrability & conflicts.

 Takes about 1 year to receive response.
 May require amendment or modification.
 After PTO approves, opportunity for opposition
from other mark owners.
 Registration if no opposition.
 TM Registration
• Must trademark rights be registered to obtain
trademark protection?
• No, but registration has several advantages,
including:
– Constructive notice nationwide of the trademark
owner's claim.
– Constructive notice of ownership
– Evidence of ownership of the trademark.
– Jurisdiction of presiding territorial courts may be raised.
– Registration can be used as a basis for obtaining
registration in foreign countries.
– Registration may be filed with the Customs Service to
prevent importation of infringing foreign goods.
– People conducting searches will find your registration &
avoid using similar mark (avoiding conflicts).
 Benefits of Registration

• Right to use ® symbol.

‒ Use ™ for unregistered marks.

• Can record registration with customs to

prevent importation of infringing goods.

• Can file foreign registrations based on local

registration.
 Markings
• Do you have to mark your goods with ® to get
trademark protection?
– No, so long the mark is in use.
– In fact, you can only use ® once the mark has been
registered.
• But not even while it is pending.
 Unregistered Trademarks

 Protected where products are sold.

⁻ Rights acquired by use in commerce,

⁻ but only in area of use.

 Can be source of conflict.

⁻ 2 Users in different areas.

⁻ Each one will have rights.
⁻ May need to determine the first user.
 Transfer of ownership (assignment)
• An assignment is the legal transfer of ownership of
any property such as a trademark or copyright from
one owner to another.
– The transferee or "assignee" is the person who acquires
ownership, and the transferor or "assignor" is the person
who transfers ownership rights.
• To be valid, a trademark assignment must include
the transfer of goodwill accrued in the assigned
mark beyond mere assignment of the mark itself.
– Goodwill is an accounting concept meaning the value of
an asset owned that is intangible but has a quantifiable
"prudent value" in a business.
 TM Rights
• What are the rights of the trademark owner?
– Prevent trademark infringement.
– Use of mark in commerce where use is likely to
cause confusion or deception.
– Prevent trademark dilution - Infringement.
– Use of mark in a disapproving manner
» Tarnishment
» Overuse of mark
» Distortion
» Misrepresentation
 Trademark Infringement,
Counterfeiting & Dilution
• Passing-off.
– A mark that is likely to cause confusion with a trademark
already existing in the marketplace.

• Counterfeiting.
– The deliberate copying of a mark.

• Dilution.
– The distinctive value of the mark is substantially reduced
through misuse from another mark.
 TM Dilution
• Unauthorized use of a famous trademark on
products that do not compete with those of
trademark owner (Lanham Act § 43(c); 15 U.S.C.
§1125(c)).
– Designed to protect distinctive quality of famous
trademarks.
– No requirement of consumer confusion.
– A trademark is diluted when use of similar or identical
marks to identify non-competing goods or services
results in the lessening of trademark owner’s ability to
identify its products or services.
 Passing-off
• Law of passing off is a common law tort (civil wrong;
civil liability at law).
• Law also used to enforce protection of unregistered
trademark rights.
• The tort of passing off protects the goodwill of a
trader from a misrepresentation.
• The law of passing off prevents one trader from
misrepresenting goods or services as being the
goods and services of another.
• Also prevents a trader from holding out his or her
goods or services as having some association or
connection with another when this is not true.
 Passing-off
• For trademark protection of registered and
unregistered marks.
‒ Protected under the law of tort or law of delicts
(common law).
• Equivalent to misrepresentation.
– Tort = Civil wrong, considered under civil law.
– Liable to legal action.
– May not necessarily be a crime but even negligence.
• The victim of the harm can recover their loss as damages in a
lawsuit.
• Requirement of “goodwill” – affects, tarnishes the
goodwill.
– Goodwill is an accounting concept, meaning the value of an asset
owned that is intangible but has a quantifiable "prudent value" in
a business.
 How Do You Test The Likelihood To
Cause Confusion
• Strength of mark.
‒ Degree of distinctiveness.
• Similarity of marks.
• Similarity of goods or services (categories).
• Evidence of actual Confusion.
• Marketing channels.
‒ Do they conflict?
• Sophistication of Consumers.
‒ Are they able to discriminate between the products or
not?.
• Was the confusion a result of bad faith.
‒ Tarnishing the goodwill.
 Passing-off
 Likelihood of Confusion Test: Whether consumers
are likely to be misled or confused as to source or
sponsorship of goods (Lanham Act ; 15 U.S.C.
§1114(1)).

McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC : Company that makes

Splenda® sued competitor.
Would this be likely to confuse consumers and how much?
 Apple v. Apple

Series of disputes began in 1980:

George Harrison saw Apple the
Computers ad in a magazine and
thought potential for trademark
conflict.
Beatles sued & settled twice - Apple Computer agreed not to use the
word Apple to sell music.

3rd lawsuit in 2006 over iTunes – Case decided on contract grounds rather
than TM.
- Settlement gave Apple Computer right to name in connection with
“electronic goods, computers, telecommunications equipment, data
processing equipment” and “data transmission services”.
Cybersquatting
 Cybersquatting

• TM registered as domain name by someone

other than TM owner.

− Can be registered without being used at all.

− Often, motive for registration of domain name is to

sell to TM owner.

• People who register domain names for

eventual sale labeled "cybersquatters“.
 Anti Cybersquatting Consumer
Protection Act
• 1999 amendment to Trademark Act. 15 USC
1125(d).
• Cybersquatting:
‒ “Registering, trafficking in, or using a domain name
with bad faith intent to profit from the goodwill of a
trademark belonging to someone else.”
• Remedies:
‒ Transfer of domain name or
‒ Cancellation of domain name &
‒ Civil remedies from $1000 to $100,000; or
‒ Simple arbitration (settlement) procedure can be used
to resolve dispute.
 Cybersquatting
Dispute resolution Procedure
• Domain registrants required to submit (answer)
to arbitration when TM owner asserts that:
− The domain name is confusingly similar to a
trademark.
− Registrant has no legitimate interest in domain name.
− Domain name registered in bad faith:
 Registrant intends to cause diversion of consumers or dilution
of trademark.
 Registrant offers to sell name to trademark owner.
 Registrant applied for multiple domain name registrations
(should be in the habit of cybersquatting).
 Cybersquatting Case
Uniform Resolution Procedure

 Gordon Sumner (Sting) v.  Madonna v. Parisi

Urvan
 Singer had no legal claim to
sting domain since not his
real name & never
registered.
 No bad faith use by Urvan
▪ Used for sting computer
game web site.
▪ Common word with a
variety of meanings.
 Don Parisi, a NY web developer
registered domain madonna.com
& used as link to porn site.
▪ He rejected defense based on
existence of word in dictionary.
▪ There was no evidence Parisi
intended to use word in ordinary
meaning but in bad faith.
▪ Parisi had not used domain name
prior to registering & had
purchased it for $20,000.
 TM Duration

• Ownership & rights based on use.

– TM can be abandoned by non-use.

• Registration: 10 years.
– Can renew for 10 year periods as long as mark still
being used.
 TM Duration
• How long do trademark rights last?
• Forever, as long as mark is being used in a source-
identifying manner for goods or services.
• Federal trademarks must be renewed every ten years.
• For a trademark registration to remain valid, an Affidavit of
Use ("Section 8 Affidavit") must be filed:
– (1) between the fifth and sixth year following registration, and
– (2) within the year before the end of every ten-year period after
the date of registration.
• The registrant may file the affidavit within a grace period of six
months after the end of the sixth or tenth year, with payment of an
additional fee.
• The registrant must also file a renewal application within
the year before the expiration date of a registration,
– OR within a grace period of six months after the expiration date,
• with payment of an additional fee.
END
Geographical Indications of Goods
 Geographical Indications
• Name or sign used on goods
originating from specific
geographical origin or
location and possess
qualities, reputation or
characteristics that are
essentially attributable to
that place of origin.
• Like a trademark
distinguishes, but primarily
based on geographical origin.
 Geographical Indication (GI)
• An indication (usually a name), which identifies
goods;
• as agricultural goods, natural goods or manufactured
goods;
• As originating, or manufactured in the territory of country, or a
region or locality in that territory,
• Where a given quality, reputation or other characteristic of such
goods is essentially attributable to its geographical origin.
• GI need not be a geographical name.
− E.g. Alphonso, Basmati.
• Goods include goods of handicraft or of industry
and also foodstuff.
Protection for geographical indication
• Product must come from a particular geographical
territory.
• Product uses a name or link to the particular
geographical nature of the territory.
• Used to stop others from using it.
 Examples of GIs
• Swiss made
• Swiss chocolates
• Sarawak pepper
• Salted egg
• Sweet tamarind
• “Zimbabwean beef”
 Registration
• Geographical indications should be registered.
• Geographical Indications registry examines
and publishes the application before
registration
• Registration is valid for 10 years but can be
renewed indefinitely.
 GI Rights

• Exclusive right to use the Geographical

Indication on the goods.

• Right to obtain relief for infringement of the

Geographical Indication.
‒ Forms of infringement similar as with trademarks.

‒ Relief similar that for trademark protection.

END