DL101: General Course on Intellectual Property

Summary for Module 4 - Trademarks

“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.

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.