Trade Marks

Beenish Aslam Shaikh

Department of Law
Faculty of Shariah and Law
International Islamic University Islamabad
 Trade Marks
According to article 15 of TRIPS Agreement
• A trademark is a sign capable of distinguishing the goods or services
of one enterprise from those of other enterprises.
• A trademark is any sign that individualizes the goods of a given
enterprise and distinguishes them from the goods of its
competitors.”
These signs could be words including personal names, letters,
numerals, figurative elements and combinations of colours, as well as
any combination of signs.
there is no limitation on the type of signs that can constitute
trademarks under the TRIPS Agreement. The emphasis, however, is on
distinctiveness – i.e. the ability of the signs to distinguish products of
one enterprise from those of others
• Mostly trademarks are word marks, graphic
symbols, labels, or logos. However it may be
• The particular shapes of products ( e.g. shape of
the ‘Coca-Cola’ bottle)
• The particular colors (e.g. the magenta color of
‘Deutsche Telekom’)
• The particular sounds (e.g. ‘Nokia’ ringtone), and
• ‘multimedia marks’ ( which are a combination of
image and sound)
A word or a combination of words, letters, and
numerals can perfectly constitute a
trademark. But trademarks may also consist of
drawings, symbols, three-dimensional features
such as the shape and packaging of goods,
non-visible signs such as sounds or fragrances,
or color shades used as distinguishing features
– the possibilities are almost limitless.
 Trade Marks for Goods and Services
In the past, trademarks were mainly registered and protected
for goods only. The registration of trademarks for services
(‘service marks’) was optional under the Paris Convention,
and few countries provided for registration of such marks.
However, with the rise of the service economy and the
resulting importance of trademarks in distinguishing services,
the TRIPS Agreement stipulated that service marks should
be protected in the same way as trademarks for goods.
Where the provisions on trademarks apply equally to marks
identifying goods and services, the term ‘products’ will be
used in this module to denote both goods and services.
 Why Protection?
• The trademark system serves to protect producers against unfair
competition from other producers seeking to free ride on the goodwill
and positive reputation earned by the trademark owner.
• It provides a guarantee that a trademarked product or service originates
from or is authorized by the trademark owner,
• trademark protection also facilitates consumers’ choices when
purchasing certain products or using certain services.
• Consumers often rely on trademarks to indicate the source company and
to distinguish the product from similar goods that are produced by other
enterprises. Trademarks therefore help consumers to reliably identify
and purchase a product or service which they prefer because of its taste,
quality or other characteristic that consumers have come to expect on
the basis of previous purchases or through advertising or word-of-mouth
recommendation.
 How Trade Marks can be Protected?

At the national/regional level, trademark

protection can be obtained through registration,
by filing an application for registration with the
national/regional trademark office and paying
the required fees. At the international level, you
have two options: either you can file a trademark
application with the trademark office of each
country in which you are seeking protection, or
you can use WIPO’s Madrid System.
• Some countries provide trademark protection only after
the registration of a sign as a trademark whereas in other
countries it may be available without registration simply
on the basis of use termed as common law trademarks.
• The TRIPS Agreement only obliges members to accord
rights to the owner of registered trademarks. However, it
explicitly recognizes in Article 16.1 members’ entitlement
to make trademark rights available without registration on
the basis of use. It also requires protection for well-known
marks that are not registered.
 Rights of Trade Marks holder
The TRIPS Agreement also stipulates the rights of trademark owner (Article 16)
and exceptions to these rights (Article 17)In principle, a trademark registration
will confer an exclusive right to the use of the registered trademark. This implies
that the trademark can be
1. exclusively used by its owner and 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 identical or similar to those in respect of which the trademark
is registered where such use would result in a likelihood of confusion
2. licensed to another party for use in return for payment. The TRIPS Agreement
provides in Article 21 that, while it is up to each member to prescribe conditions
on the licensing and assignment of trademark rights, an owner of a registered
trademark must always be able to assign the trademark with or without the
transfer of the business to which the trademark belongs.

.
 Refusal of Registration
• The TRIPS Agreement in Article 15.1 provides that
lack of distinctiveness or visual perceptibility the
trademark protection may be refused.
• The TRIPS Agreement also recognizes in Article
15.2 that members may also refuse the
registration of a trademark in their territory on
grounds other than those provided in TRIPS if
they do not derogate from the provisions of the
Paris Convention.
 Term of Protection
• According to Article 18 of the TRIPS Agreement, the
initial registration and each renewal of registration shall
be for a term of no less than seven years. It also
stipulates that the registration of a trademark must be
renewable indefinitely
• It can be renewed indefinitely on payment of additional
fees. This means that trademark rights, in contrast to
copyright or patent rights, can last for an indefinite
period of time, provided the right owner renews the
registration at the expiry of each term and pays the
required renewal fees.
 Compulsory Licensing
• Article 21 of the TRIPS Agreement makes it
clear that members states shall not permit any
compulsory licensing of trademarks.
• This means that here exist no public policy
rationale for allowing compulsory licensing in
the area of trademark rights and governments
may not, therefore, permit the use of a
trademark without the authorization of the
right holder.