Registrability of Trademarks - Essay Example

Registrability of Trade Marks. The Trademarks Law enforces the right of the consumer to remain undeceived by the plethora of products available in the market and it also allows the consumer to classify products of a particular make. Thus a trademark is unique for a particular product and this may be a name, phrase, symbol, picture or style which makes identification of the product easy. In the case of a business which provides a service and not a product, such a mark is termed a service mark. These marks enable consumers to evaluate the quality of the products or the services by virtue of these marks. Besides this, the trademarks make the manufacturer responsible for the product. In the absence of these marks, substandard quality or other manufacturing defects might not be traced to their manufacturer. Thus trademarks on the one hand ensure and maintain the reputation of the manufacturer and on the other hand they make the seller liable for the quality of the goods made or sold. The fundamental feature of the Trade mark law is to defend the consumer's investment in respect of the goods or services purchased, from unfair and misleading advertising by immoral competitors. Most of the courts have made it mandatory for trade marks to be non- descriptive of the goods to which they are applied. All goods and services are classified into 45 internationally recognized classes for the purpose of identifying a company's rights in respect of goods or services. As such the trademark registration will be done only for these groups. Again, the trademark application shall describe in detail as to which goods or services of a category being applied for. Thus trademark registration would disqualify applications claiming all goods in a class. Trademarks must be protected and used more frequently compared to copyrights and patents. The holder of a patent or copyright may inhibit its usage by keeping the creation for himself, where as a company obtaining a trademark and failing to use it, or failing to look after it from being used in the breach, is likely to loose the right to it. In the event of a trademarked term becoming generic out of common use or in the event of a consumer failing to recognize it as a trademark or a court ruling to that effect, makes it null and void1. The reasons for rejection or acceptance for registration of trademarks under the Trade Marks Act, 1994 and the registrability of certain type of marks are discussed here under. The smell of roses applied to Rambling Rose Dolls. In the U.K., several scent registrations have been issued as a result of the amendment to the U.K. Trademark Act in 1994. Subsequently, the registration of the smell of roses was done in respect of car tyres in the United Kingdom2. This trend is visible in other European countries also, where applications for scent marks have been filed and the OHIM has accorded permission for the registration of a mark incorporating "The Smell of Fresh Cut Grass" for tennis balls3 and similarly in the case of Benelux4. The intention is to enhance product esteem. Smell marks are registrable if they are already being used or will be used in the future as a trademark. It must be a supplementary component produced by the manufacturer and it should not be a part or arising from the goods or services or the consumer should particularly associate the smell with that product5. The public has been associating the smell of roses with car tyres and this has been registered so the third clause of registrability is inapplicable to rambling dolls. Registrability of the exterior form of a tin of baked beans produced by Gusto Ltd. The canister of beans in this case, is similar to that used by another prominent manufacturer which though not registered as a trademark was being used for 30 years. This shape will be provided legal protection on the basis of reputation or goodwill. The efforts of a competitor to use a name similar to that being used by a small business which had been doing business from many years without a registered trademark will be restricted and foiled by the courts though there is no trademark registration6. For this to be applicable it is essential that the plaintiff's goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature; that there is a misrepresentation by the defendant, intentional or otherwise, causing or likely to cause the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and that the plaintiff has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation7. There are many products which are instantly identified by the public because of their distinctive external appearance. Examples are the Dimple Scotch Whiskey bottle, Cointreau Liqueur bottle, etc. Gusto Ltd's proposed shape for its cans will not be registered as a company exists which has been using this type of external appearance for a sufficiently long period of time. Registration of a tomato shape for Hoonz tomato sauce in squeezy plastic bottles. A company's application for registering the shape of a bottle, vide application numbered 1560017 and 15600188, was turned down on the grounds that the shape of the bottle was not unique. In respect of the Hoonz tomato sauce bottles, the shape of the bottles though descriptive are not unique and thus cannot be registered as a trademark as per the provisions of The Trade Mark Act 1994, which states that "trade marks devoid of any distinctive character, will not be registered"9. Registrability of the colour pink for "Flaming Lemonade". This colour had been used by the applicant Fizz Inc for several years. Apart from other salient characteristics, the colour may individualise a producer's goods hence colour is protected by the law. However a colour, as a rule, cannot be monopolized to identify a product. In the U.K. colours are registered as trademarks, for example, the colour silver in connection with anthracite briquettes, red pins of a shackle, the red bands on the handle of tennis, badminton, and squash racquets, the green outer surface of a building, etc. The colour pink with its usual association with a flamingo bird can acquire uniqueness, through usage over a period of time, before an application was filed for registration. Hence, the colour pink is registrable for the flamingo brand lemonade10. It should be borne in mind that colour per se if employed with tact and wisdom can corner the lion's share of the market for a product. This is because of the powerful impact that colour has on one's senses. Some cogent examples of this contention are Duracell11, Signal12, Owens-Corning13, etc14. Registrability of the well known slogan Beanz Meanz Hoonz from the advertising campaign run by Hoonz Ltd. Slogans in advertisements if properly related to the goods advertised serve to identify them. The technical provisions of attachments do not hinder trademark recognition. If a slogan is associated with a specific product or service its use in any other context is prohibited as it tends to cause confusion to the consumer of that product or service. Further, such acts are contrary to the policy of the trademark law. Consequently, if a slogan is specific, prominent and uniquely identified by the consumer as denoting a specific brand or a specific group of goods in clear and unambiguous manner it is registrable. Some of the more common and famous slogans are those of Orange15 , Coca-Cola16, Kellogg's Cornflakes17, British Airways18, these slogans immediately identify the product. In this manner the slogan "Beans means Hoonz" is registrable as it evokes the memory of a can of beans in the mind of the person hearing it. Registrability of a proposal to sell chocolate mints in a pyramid shape, with the brand name of Pyramints. In U.K. Law three dimensional mark forms are registrable. This is in accordance with the EU's Trademark Harmonization Directive. Upon introduction of this new legislation, unique three dimensional marks were registrable. The pioneering examples of this in the United Kingdom are the trademark registration of the Coca-Cola bottle, the Chloe perfume bottle and the Toblerone chocolate bar19. The Toblerone chocolate bar was registered with the specifications appended below: Trade mark number - E505461 Filing date - 1st April 1997 Publication date - 18th January 1999 Registration date - 26th October 199820. Companies invest heavily in terms of time and money to enhance the image of their products by chiseling the shape of the packaging and shape of the product in order to make it unique. This increases the trademark goodwill enormously. Of late, the shapes of products and their packaging or elements which serve to indicate the nature of the products are accepted as trademarks. The registrability of three dimensional shapes has been recognized by treaties such as the NAFTA Agreement, the EEC Harmonization directive, the Madrid Protocol and the Andean Pact. The EEC Harmonization Directive specifically provides for trademark registration based on the shape of the goods or their packaging. All the same, the registrability of three dimensional trademarks is in the emerging stage. So far only the U.K., U.S.A., and some other European countries have accorded such registrations21. Considering certain factors like distinctiveness, familiarity and the fact that the product has not yet been manufactured on business lines, it shall be deemed that the pyramint trademark is not be registrable. Registrability of the name, Southampton for motor cars, which is a well established unregistered mark recognized as leader in its field of quality cars. The word Southampton summons up the vision of a motor car among the people. This is a well established company of long standing. Thus the name itself is unique. In respect of names a trademark is registered if the name is distinctive or has acquired distinctiveness. As such the name is registrable22. The classification of the various goods or services whose registrability was discussed is appended below: Rambling Rose Dolls are classified as belonging to Class 28. Tin of Baked Beans are classified as belonging to Class 31. Tomato Sauce in squeezy bottle is classified as belonging to Class 29. Flamingo Lemonade is classified as belonging to Class 32. Beanz Meanz Hoonz is classified as belonging to Class 31. Pyramints are classified as belonging to Class 3023. The first and foremost principle of trademarks is that it focuses on the description of the source of a particular product and on who the manufacturer is. It also enables diversion of the consumer's attention from the product to the marketing of the product and intimates this information to the consumer of a particular product in a unique way. The philosophy behind the marks from the past to the present has changed a lot. Of late, the thinking has totally changed with the marks having attained legal status. These marks comprise of colours, shapes, slogans, sounds and scents and all of these have officially become members of the class of the age old traditional marks with privileges similar to that the other members enjoy. Signs, to qualify as trademarks have to undergo very stringent tests. The consumer will be put to a great deal of confusion in respect of similar brand names and the manufacturer will be subjected to unfair trade policies from competitors if the tests are not sufficiently stringent. These tests serve to protect the consumers and the manufacturers alike from unscrupulous persons and unfair trade practices. Bibliography. Classification of Goods and Services, (20th December 2005), Trade Marks, The Patent Office, retrieved from http://www.patent.gov.uk/tm/reference/classguide.htm. Details for community trade mark E505461, Trade Marks, The Patent Office, retrieved from http://webdb1.patent.gov.uk/RightSite. Guidelines for Trademark Examination, Examination Guidelines Subcommitte Trademark Office Practices Committee, 13th May, 1998 Halsbury's Laws of England, (1995) 4th Edition Vol 48 (1995 reissue) at paragraph 165. In the matter of two applications to register the shape of a bottle as a trademark in classes 29 and 32, applications numbered 1560017 and 1560018 before the registrar 3 of trademarks, 21st January 1998. Jackson, John H. Implementing the Uruquay Round. Oxford University Press. London.1997. Matthews, Duncan. Globalising Intellectual Property Rights; The Trips Agreement. Routledge. 2002. Nilson, H. Customize the Brand: Make It More Desirable and Profitable. Wiley, 2003. Noonan, Carol and Raskin, Jeffery: Intellectual Property Crimes. American Criminal Law Review, Vol.38, 2001. Sarginson, Lloyd C. & Sversky, Lillian,( 29th March, 2000). Acquiring A Taste Around The World For Colour, Shape, Slogans, Sound And Scent As Trademarks, Bereskin & Parr. Sumitomo Rubber Industries Ltd., Registration No. 2,001,416, U.K. Patent Office. Trademark, retrieved 3rd February 2006 from http: //en.wikipedia.org /wiki /Trademark. Trademarks: Sounds, Colours and Scents, retrieved from http://www.ladas.com/Trademarks /MakingSenseTM.html. Trademarks - trademark protection, retrieved from http://www.explainplease.com /trademarks.htm Read More