CMST3ii3
MODULE 3
TRADEMARKS
TM = ?
“any word, name, symbol, or device, or any combination thereof that could indicate the origins of a product or service”
Refers to: logo, design, colour scheme, container shape, sound, or smell
Justifying TMs...
Justifying TMs
- prevent unfair competition by confusing or deceiving customers
- allows a company to protect and enjoy its “goodwill” in the marketplace
- Designed to protect not just private property but consumers’ interests as well
- Prevents deception, confusion, reduces search costs
- TMs do NOT incentivise the creation of arts and sciences for the use and benefit of society
TM law in developing nations can provide “incentives to develop brand recognition for domestically produced high-quality crafts, clothing and foods, among other goods and services".
The precepts:
Precepts
- Marks must be 'distinctive'
- Fanciful/arbitrary/suggestive/descriptive
- Marks must have acquired 'secondary meaning'
- Market specific - scope for confusion?
- Need to be registered in every national market
- Famous marks - 'blurring' or 'tarnishment'?
- Scents (no sense)
Nominative fair use:
Limits
- (1) the product or service in question is not readily identifiable without use of the trademark,
(2) only so much of the mark used as is reasonably necessary to identify the product or service
(3) use of the mark does not suggest endorsement
For: comparative advertising, parody and noncommercial use
AND: marks must be in continual commercial use
Quiz!
Going generic...
Generic in US; R elsewhere
Mechanics
Mechanics
- Companies search TM databases around the world for infringements, similarities and competitive intelligence
- TM = intention to serve as identifying mark
- R = registered with TM office
Group activity!
Activity
Come up with 4 names for a new coffeeshop chain:
- Fanciful/arbitrary/suggestive/descriptive
- Search for availability in Canadian Trademarks Database
- https://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/home
Other dimensions
Other dimensions
Geographic designation
Geographic designation
Indication of source/designation of origin (WIPO)
Usually foodtsuffs
Protect reputation of regional foods/producers' livelihoods
Personality rights
Personality rights
- TM law can apply to misuse of likenesses
- In Canada, known as 'personality rights'
- Must be commercial in purpose and suggest endorsement
Cultural appropriation
Cultural appropriation
- Use of name, symbol, object, trait or feature distinctly associated with a people or culture
- Can be protected against through 'collective rights'