Registrability of Trade Marks - Term Paper Example

Registrability of Trade Marks. The purpose of the Trademark Law is to prevent the public from being deluded, and to let the consumer identify a specific product with a specific manufacturer. A trademark is a distinctive name, phrase, symbol, design, picture or style used by a business to identify itself to the consumers. If the business identified is a service rather than a product, the mark is called a service mark. 'From the economic point of view, a trade mark is symbol that allows a purchaser to identify goods or services that he is considering for purchase'. Most jurisdictions make it mandatory for trade marks to be non - descriptive of the goods concerned. For the purpose of identification of the source of goods or services, marks enable consumers to ensure expected quality. Further, marks help consumers to identify goods and services that meet their individual expectations. Additionally, trademarks ensure accountability and responsibility for in the absence of these, a seller's mistakes or low quality products would be untraceable to their source. Therefore, trademarks not only provide an incentive to maintain a good reputation for a predictable quality of goods but also make it essential to be responsible for the quality and price of the goods manufactured or sold. One of the main underlying purposes of trade mark law is to protect the owner's investment in the quality of the goods or services sold from dilution due to unfair competition and deceptive advertising by unscrupulous competitors. With the purpose of defining which goods or services a company has rights over, all goods and services in the world are categorised into 45 (formerly 42) internationally recognised categories. A trade mark registration will only be for some of these categories. Further, within each category the trade mark application must specify exactly which goods/services are claimed. For instance, most trade mark registries will not accept applications which try to claim all goods in Class 1. Trademarks must be actively used and defended in contrast to other forms of intellectual property such as copyrights and patents. A copyright or patent holder may "sit on" his creation and prevent its use, but a company claiming (even registering) a trademark that fails to make active use of it, or fails to defend it against infringement, may lose the exclusive right to it. Further, if a court rules that a formerly trademarked term has become "generic" through common use or in other words the average consumer doesn't realize it is a trademark, it may also be ruled invalid. (Trademark, 2006). In the sequel the registrability of certain types of marks under the 1994 Trade Marks Act, including the grounds for their acceptance or refusal will be contemplated. One, the trademark smell of roses as applied to Rambling Rose Dolls. Amendment to the U.K. Trademark Act in 1994 has resulted in a number of scent registrations being issued in the U.K. These include the registration of the smell of roses as applied to car tyres (Sumitomo Rubber Industries Ltd., Registration No. 2,001,416). In addition, applications for scent marks in other European countries have also originated and the OHIM has permitted the registration of a trade mark comprising "The Smell of Fresh Cut Grass (Application No. 428,870) for tennis balls. This mark is also registered in Benelux (Registration No. 591,693). (Sarginson, Lloyd C. & Sversky, Lillian, March 29, 2000). Many a time the purpose of scents is to increase the attractiveness of products. However, it is highly unlikely that potential consumers will associate these fragrances with the product and hence it makes the task of establishing adequate distinctiveness on this basis difficult. In order to be registrable a smell mark: 1. It must be established that the smell is either used or will be used as a trademark. 2. The smell is an additional component created by the manufacturer and does not arise from the goods or services. 3. The public either associates or will associate the smell exclusively with that particular product. (Examination Guidelines Subcommitte Trademark Office Practices Committee, 13th May, 1998). In our present case the smell of roses is already registered for car tyres as stated above. Hence, the third condition of registrability is not applicable to this particular case. In other words the public will not associate the smell of roses with rambling rose dolls as the public associates this smell with a particular brand of car tyres. Therefore, the smell of roses is not registrable in respect of rambling dolls. Two, we will consider the registrability of the whole external appearance of a tin of baked beans produced by Gusto Ltd, wherein the appearance is similar to that of a tin used by a well known manufacturer which was not registered as a mark but had been used for 30 years. Albeit, the trade mark had not been registered all the same it had been in use for 30 years and in many jurisdictions such reputations or goodwill are afforded protection though they are unregistered trademarks. Further, an attempt by a rival business to use the same name as a small business which had been conducting its business for many years without registering a trademark would be prevented by the courts, despite the lack of a trademark registration. (Trademarks - trademark protection, n.d). In this context the law of passing off as described below is applicable; There are important conditions involved, namely, (1) that the plaintiff's goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature; (2) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and (3) that the plaintiff has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation. (Halsbury's Laws of England,1995). In the case under consideration the trademark was not registered, but was in existence for 30 years and was enjoying a good reputation. Hence, the external appearance of the tin of baked beans produced by Gusto Ltd, cannot be registered. Three, registration of a tomato shape for Hoonz tomato sauce in squeezy plastic bottles. In the application numbered 1560017 and 1560018 an attempt was made to register the shape of a bottle. However, the Registrar refused to do so stating that the shape of the bottle was not distinctive in character. Similarly, in Hoonz tomato sauce bottles the shape maybe descriptive of its contents but it is definitely not distinctive. Hence, it cannot be registered as a trade mark. (In the matter of two applications to register the shape of a bottle as a trademark in classes 29 and 32, 1998). Four, registrability of the colour pink for "Flamingo Lemonade" which has been used by the applicant Fizz Inc for several years it is to be determined. Sometimes a colour, taken in association with other characteristics, may serve to distinguish one's goods, and thus be protected by the courts; but, as a rule, a colour cannot be monopolized to distinguish a product. The United Kingdom has also recognized and registered colours as trademarks, e.g., the colour silver in connection with anthracite briquettes, the colour red applied to the pin of a shackle, three red bands on the handle of tennis, badminton, and squash rackets, and the colour green applied to the exterior surface of a building. However, registrants may be required to prove that the colours had acquired distinctiveness through prior use or, if the colour to be registered is the colour of the goods themselves, proof or assurance that the colour serves no function other than as a trademark may be requested. The colour pink is associate able with a flamingo bird and such it has acquired distinctiveness by virtue of having been used for a large number of years before an application for registration was made. Hence, the colour pink is registrable for the flamingo brand lemonade. (Trademarks: Sounds, Colours and Scents, 1996). Five, we will consider the registrability of the well known slogan Beanz Meanz Hoonz from an advertising campaign run by Hoonz Ltd. Slogans are frequently used in advertisements. Fundamentally, slogans function as trademarks for goods when used only in advertising provided the slogan is connected with the goods and serves to identify them. Under these circumstances, technical requirements of affixation should not pose a hurdle for trademark recognition. Whether or not goods or services are involved, it would be violative of trademark law policy to permit free use of a slogan that consumers recognize as being associated with a particular product or service. From the foregoing we can conclude that the slogan in question is well known and distinctive because it refers to a particular brand of a particular category of goods in an unambiguous manner. This slogan enables the consumer to identify the particular goods or product as belonging to a particular manufacturer. Hence, the slogan is registrable. Six, registrability of a proposal to sell chocolate mints in a pyramid shape, with the brand name of Pyramints. With the advent of the Trade Marks Act of 1994, U.K. law now permits the registration of three dimensional mark forms. This new Act is in accordance with and implements the EU's Trademark Harmonization Directive. After this new legislation, three-dimensional marks showing acquired distinctiveness have been accepted. Important recent trademark registrations of this type in the United Kingdom are the shape of the Coca-Cola bottle, the Chloe perfume bottle and the Toblerone chocolate bar. (Trademark, 2006). The details of the Toblerone chocolate bar registration are appended below: Trade mark number - E505461 Filing date - 1st April 1997 Publication date - 18th January 1999 Registration date - 26th October 1998. ( Details for community trade mark E31252, Trade Marks, The Patent Office). While, developing distinctive product and packaging shapes, in which trademark goodwill is accumulated, companies invest a vast amount of time and money. It is advisable for companies which make particular use of product and packaging shapes to distinguish their goods register their products. The international trend is currently in favour of accepting as trademarks, shapes of products and packaging or elements of them which can perform a source-indicating purpose. An indicator of this trend is the inclusion of three dimension shapes in the definition of trademarks. Most of these treaties - the NAFTA Agreement, the EEC Harmonization Directive, the Madrid Protocol and the Andean Pact - expressly recognize the registrability of three dimensional shapes. The EEC Harmonization Directive was the first supranational directive to provide specifically for trademark registration of the shape of goods or their packaging. The registrability of three dimensional trade marks is still in the nascent stage and steeped in controversy. A few countries like the UK, USA and some European countries have permitted such registrations. After taking into account various factors like distinctiveness, familiarity and the fact that the product has not yet been manufactured on a commercial basis it has to be concluded that the pyramint trademark is not registrable.(Sarginson, Lloyd C. & Sversky, Lillian, March 29, 2000). Seven, registrability of the name, Southapmton for motor cars, which is a well established unregistered mark recognised as a leader in its field of quality cars. In this case the company is well established and in the public's mind the word Southampton conjures up the vision of a motor car. In this manner there is distinctiveness in this name. Trade mark registration is done whenever the name is distinctive or having acquired distinctiveness. In this manner the name is registrable. (Guidelines for Trademark Examination, 1998). Appended below is a classification of the various goods or services whose registrability was discussed: (Classification of goods and services, 20th December 2005). Trademarks usually bring about a shift in focus from the product to its marketing and they also seek to indicate the source of a particular product, process or source in a distinctive manner. The aim behind this is to ensure that consumers know what and from whom they are buying. The thinking on many non-traditional marks has changed to a very large extent in recent years. At present this thinking is such that the point has been reached whereby progressively more jurisdictions marks comprising of a single colour, shape, slogans, sounds and scents are becoming members of the class of traditional marks with the privileges that other members enjoy. The tests that must be undergone by signs to qualify as trademarks are very stringent. The reason for this is that these tests have to adequately ensure that consumer is befooled by similar sounding brand names and at the same time the manufacturer is not subjected to unfair competition from other businessmen. References. Trademark, retrieved 3rd February 2006 from http: //en.wikipedia.org /wiki /Trademark. 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. Guidelines for Trademark Examination, Examination Guidelines Subcommitte Trademark Office Practices Committee, 13th May, 1998 Trademarks - trademark protection, retrieved from http://www.explainplease.com /trademarks.htm 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. Trademarks: Sounds, Colours and Scents, retrieved from http://www.ladas.com/Trademarks /MakingSenseTM.html. Details for community trade mark E505461, Trade Marks, The Patent Office, retrieved from http://webdb1.patent.gov.uk/RightSite. Classification of Goods and Services, (20th December 2005), Trade Marks, The Patent Office, retrieved from http://www.patent.gov.uk/tm/reference/classguide.htm. Read More