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TRADE MARKS

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karolina monsivais

on 16 February 2015

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Transcript of TRADE MARKS

INTRODUCTION
Trademarks started to play an important role with industrialization, and they have since become a key factor in the modern world of international trade and market-oriented economies.


TRADEMARKS
A trademark is any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors.

Any visible sign capable of distinguishing the goods or services of an enterprise from those of other enterprises

Service marks
In modern trade consumers are confronted not only with a vast choice of goods of all kinds, but also with an increasing variety of services which tend more and more to be offered on a national and even international scale. There is therefore also a need for signs that enable the consumers to distinguish between the different services such as insurance companies, car rental firms, airlines, etc.
These signs are called service marks, and fulfill essentially the same origin-indicating and distinguishing function for services as trademarks do for goods.

It follows from the above principle that service marks can be registered, renewed and canceled in the same way as trademarks; they can moreover be assigned and licensed under the same conditions. Rules devised for trademarks therefore apply equally, in principle, to service marks.

Collective Marks and Certification Marks
A collective mark may be owned by an association which itself does not use the collective mark but whose members may use the collective mark; the members may use the collective mark if they comply with the requirements fixed in the regulations concerning the use of the collective mark. An enterprise entitled to use the collective mark may in addition also use its own trademark.

The regulations concerning the use of the collective mark normally have to be included in an application for the registration of the collective mark and any modifications to the regulations have to be notified to the Trademark Office.
This ensure that collective marks are to be admitted for registration and protection in countries other than the country where the association owning the collective mark has been established.

The certification mark may only be used in accordance with the defined standards.

The main difference between collective marks and certification marks is that the former may be used only by particular enterprises, for example, members of the association which owns the collective mark, while the latter may be used by anybody who complies with the defined standards.

Signs which May Serve as Trademarks
It follows from the purpose of the trademark that virtually any sign that can serve to distinguish goods from other goods is capable of constituting a trademark. Trademark laws should not therefore attempt to draw up an exhaustive list of signs admitted for registration. If examples are given, they should be a practical illustration of what can be registered, without being exhaustive. If there are to be limitations, they should be based on practical considerations only, such as the need for a workable register and the need for publication of the registered trademark.

If we adhere strictly to the principle that the sign must serve to distinguish the goods of a given enterprise from those of others, the following types and categories of signs can be imagined:

Words: This category includes company names, surnames, forenames, geographical names and any other words or sets of words, whether invented or not, and slogans.

Letters and Numerals: Examples are one or more letters, one or more numerals or any combination thereof.

Devices: This category includes fancy devices, drawings and symbols and also two dimensional representations of goods or containers. Combinations of any of those listed above, including logotypes and labels.

Colored Marks:
This category includes words, devices and any combinations thereof in color, as well as color combinations and color as such.

Three-Dimensional Signs:
A typical category of three-dimensional signs is the shape of the goods or their packaging. However, other three-dimensional signs such as the three-pointed Mercedes star can serve as a trademark.

Audible Signs (Sound Marks):
Two typical categories of sound marks can be distinguished, namely those that can be transcribed in musical notes or other symbols and others (e.g. the cry of an animal).


Olfactory Marks (Smell Marks): Imagine that a company sells its goods (e.g. writing paper) with a certain fragrance and the consumer becomes accustomed to recognizing the goods by their smell.

Other (Invisible) Signs: Examples of these are signs recognized by touch

Criteria of Protectability
The requirements which a sign must fulfill in order to serve as a trademark are reasonably standard throughout the world.

The first kind of requirement relates to the basic function of a trademark, namely, its function to distinguish the products or services of one enterprise from the products or services of other enterprises

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.

Requirement of Distinctiveness
The first kind of requirement relates to the basic function of a trademark, namely, its function to distinguish the products or services of one enterprise from the products or services of other enterprises

The test of whether a trademark is distinctive is bound to depend on the understanding of the consumers, or at least the persons to whom the sign is addressed.

Common words from everyday language can also be highly distinctive if they communicate a meaning that is arbitrary in relation to the products on which they are used.

Lack of Distinctiveness
If a sign is not distinguishable, it cannot function as a trademark and its registration should be refused.

Trademark Registration
Applications for registration of a trademark are to be filed with the competent government authority which in most countries is the same as the authority competent for processing patent applications. Usually, it is called “Industrial Property Office” or “Patent and Trademark Office” or “Trademark Office.”

What are the criteria governing the refusal of registration for lack of distinctiveness?
Generic Terms
: A sign is generic when it defines a category or type to which the goods belong

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.

Reference to Geographical Origin:
indicated either as the place of manufacture of the goods in question or of ingredients used in their production.

Letters, Numerals and Basic Geometrical Shapes:
These signs are often regarded as being indistinctive and therefore unregistrable. Some trademark laws (such as the former German trademark law) even expressly excluded them from registration or accepted them only if at least three letters and/or numerals are combined, or in the case of letters, if the sequence is pronounceable.

Foreign Script and Transliterations:
The registrtion may ask for a translation (a description of its meaning) in local script.

Colors:
The use of words and/or devices in colors or combined with colors generally increases their distinctiveness.

Names, Surnames:
Company names and trade names are registrable, except where they are deceptive or not distinctive.

Deceptiveness :
Trademarks that are likely to deceive the public as to the nature, quality or any other characteristics of the goods or their geographical origin do not, in the interest of the public, qualify for registration.

Reference to Geographical Origin:
Signs that are descriptive or indicative of geographical origin are false for products that do not come from the region described or indicated.

Use Requirements
Need for an Obligation to Use:
Trademark protection is not an end in itself. Even though trademark laws generally do not require use as a condition for the application for trademark registration, or even the actual registration, the ultimate reason for trademark protection is the function of distinguishing the goods on which the trademark is used from others. It makes no economic sense, therefore, to protect trademarks by registration without imposing the obligation to use them. Unused trademarks are an artificial barrier to the registration of new marks. There is an absolute need to provide for a use obligation in trademark law.

Consequences of Non-Use:
The principal consequence of unjustified non-use is that the registration is open to cancellation at the request of a person with a legitimate interest. There is moreover a tendency to require of the registered owner that he prove use, since it is very difficult for the interested third party to prove non-use. In the interest of removing “deadwood” from the register, such reversal of the burden of proof is justified.

Proper Use of Trademarks:

Non-use can lead to the loss of trademark rights. Improper use can have the same result, however. A mark may become liable for removal from the Register if the registered owner has provoked or tolerated its transformation into a generic name for one or more of the goods or services in respect of which the mark is registered, so that, in trade circles and in the eyes of the appropriate consumers and of the public in general, its significance as a mark has been lost.

Duration & Renewal
For administrative reasons, a time limit is generally provided for in trademark laws, but it is possible to renew registrations when the time limit expires.
Time limit is usually 10 years
One of the reasons for imposing such time limits is that the office can charge a fee for renewal, and this is a welcome source of revenue.

The requirement of renewal and the payment of a renewal fee is a welcome opportunity for a trademark owner to consider whether it is still worth having his registration renewed, as the trademark may have been superseded in its graphic form, or may even be no longer in use.

Publication & access to the register
The register of marks should, moreover, be accessible to the public. To ensure that owners of prior rights are properly informed it is indispensable that the register contain up to date information, namely all recorded data not only on registrations, but also on the contents of pending applications, regardless of the medium on which the data are stored.

Removal of the Trademark from the Register
The cancellation of a trademark registration is a serious matter for its owner, as it leads to a loss of his rights under the registration.

The registered owner can himself, at any time, renounce his registration for either all or some of the goods for which the mark is registered

If the owner of a trademark fails to use his mark within the grace period provided for in the law, any interested party can ask for its cancellation. If the owner cannot justify the non-use, removal of the registration is ordered by the court. If the owner can prove use or justify the non-use, but only for some of the registered goods, the court orders partial cancellation.

If a trademark consists of a sign that should not have been registered, it can be declared null and void by the court at the request of any interested party. Sometimes trademark laws also provide an ex officio procedure for that purpose. As a consequence of the declaration, the trademark is removed from the register.

If the registered owner has provoked or tolerated the transformation of a mark into a generic name for one or more of the goods or services in respect of which the mark is registered, the mark becomes liable for removal from the register.

Rights Arising from Trademark Registration
Trademark registration will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner, or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the right holder.

The Right to Exclude Others from Using the Mark
It follows from the mark’s basic function of distinguishing the goods of its owner from those of others that he must be able to object to the use of confusingly similar marks in order to prevent consumers and the public in general from being misled.

Similarity of Goods
The test of whether goods are similar is based on the assumption that identical marks are used. Even identical marks are unlikely to create confusion as to the origin of the goods if the goods are very different. As a general rule goods are similar if, when offered for sale under an identical mark, the consuming public would be likely to believe that they came from the same source.

Similarity of Trademarks
Trademarks facilitate the choice to be made by the consumer when buying certain products or using certain services.

The trademark helps the consumer to identify a product or service which was already known to him or which was advertised.

The distinctive character of a mark has to be evaluated in relation to the goods or services to which the mark is applied; highly distinctive marks are more likely to be confused than marks with associative meanings in relation to the goods for which they are registered.

Protection Beyond the Scope of Confusing Similarity
In September 1999 the WIPO General Assembly and the Assembly of the Paris Union adopted a Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks which provides guidance for determining whether a particular mark is well-known, and determines the scope of protection of well-known marks.

Trademark Piracy
Trademark piracy means the registration or use of a generally well-known foreign trademark that is not registered in the country or is invalid as a result of non-use.

Counterfeiting
Counterfeiting is first of all the imitation of a product. The counterfeit is not only identical in the generic sense of the term. It also gives the impression of being the genuine product (for instance a LOUIS VUITTON bag), originating from the genuine manufacturer or trader.
The offering of such a counterfeit product is only meaningful if the genuine product is known to the consumer. Consequently, counterfeit goods often belong to the category of luxury goods and bear a well-known trademark.

Trademark Piracy, Counterfeiting
and Imitation of Labels and Packaging

Although it is not a condition and not always the case, counterfeit goods generally bear a trademark. This has the advantage of making counterfeiting actionable as trademark infringement. Counterfeiters pay fines, and imprisonment is rarely ordered.

Change of Ownership
The ownership of a trademark can change for different reasons and in different ways.

Trademark rights may, on a natural person’s death, pass to his heir. Such a change of ownership is only possible where trademark laws allow the private ownership of trademarks.

Similarly, a trademark may pass to a new owner in the case of bankruptcy.

Assignments are the most common form of change of ownership. They are normally, but not necessarily, part of a purchase contract, whereby trademarks are sold against payment of a certain amount of money.

It is common practice for trademark owners to license third parties to use their trademarks locally in the country where they exercise their own business. However, the main importance of the possibility of licensing the use of trademarks lies in its usefulness in international business relations.

To safeguard the origin-indicating function of the trademark, it is necessary and sufficient for the owner to exercise control over the use of the mark by the licensee, particularly with respect to the quality of the goods (compliance with quality standards set by the licensor) and the conditions under which they are marketed.

In September 2000 the WIPO General Assembly and the Assembly of the Paris Union adopted a Joint Recommendation Concerning Trademark Licenses which provides a maximum list of indications and elements that an Office may require for the recordal of a license (Article 2(1)) and contains a Model International Form.

Licenses can be exclusive or non-exclusive. In the case of an exclusive license the trademark owner is not allowed to license the mark to any other person in the territory and cannot even use the mark himself. In the case of a non-exclusive license, the owner may use the mark himself and even allow others to use it. In the case of multiple licenses, very strict quality control is necessary in the interest of the consuming public.


Trade Names

Radiomóvil DIPSA, S.A. de C.V

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 have in common with trademarks and service marks that they exercise a distinguishing function. Trade names are generally quite lengthy, and are therefore not a very practical tool for use in daily business life as a reference to the company.

Trademark Licensing
If a trade name or business name is distinctive it is protected by use, whether registered or not. If it is not distinctive, it can be protected after distinctiveness has been acquired by use.

Distinctiveness in this context means that the consuming public recognizes the name as being a reference to a particular trade source.

A trade name or a business name can also be afforded protection by registration as a trademark. Usually, both the full corporate name and the short business name can be registered. To safeguard such a registration, it is of course necessary actually to use the trade name as a trademark.

Marks, Trademarks & Well known marks
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