Making Sense of Trademark Law - Essay Example

Making Sense of Trademark Law Making Sense of Trademark Law In reference to the legal context, a trade make is regarded as any sign that is capable being represented either graphically by the use of words, letter,design or numbers as long as these signs are capable of differentiating the goods and services that one is undertaking from other different undertakings. Under Article 3 of the Directive, there specific grounds that can lead to the refusal of registering a trademark. These include: signs that cannot be regarded as a trademark, signs that exclusively consists of the nature of goods themselves and the trademarks that are devoid of any kind of distinctive character. There have been many cases in the court regarding misuse of copying of trademark by other companies as a means of completion from other companies. In reference to the case of Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, the plaintiff was disputing the originality and registration of the Philips trade mark. The court was able to determine that the defendant had a trademark that had a distinctive character and in correlation their origin, the goods and services were properly applied for. Brands are often of great importance as well as value. Therefore, it is therefore, not surprising that these brands are therefore one of the business assets that are most valuable to businesses in the 21st century. It is of importance to understand that although such brands as Nike and Google are developed initially through a combination of quality service, product innovation and carefully advertizing and marketing, the trademark registration usually plays a very big role in maintaining as well as protecting the value that comes with the brand (Schechter, 1925). However, recently there has been much controversy over the trademarks and it has been determined that the subject matter of trade mark law is the sign that is embodied in the official register and not the sign that is applied on goods in the marketplace. This, therefore, makes it imperative that business makes sure that the sign that is embodied in the official register is also the sign that is on the goods in the market place (Shilling, 2002). This paper will describe this subject matter of the trademark law and the truth behind that statement. In the case of Audi AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), the H2 Audi had tried to register for the trademark Vorsprung durch Technik” (the German for “Progress through Technology”) but this trade mark had lack a disticnitve character and that is the reason why Office for Harmonisation in the Internal Market filed a la suit claiming that it was devoid of distinctive character. After careful analysis of the situation, the examiner failed to register this trademark under the judgement by which the Court of First Instance of the European communities claimed that the trademark was preventing other companies from undertaking their business. Acquiring a register trademark often means that the owner of the brand has a right to prevent other people from using the same or even a similar fashion of the brand in relation to either the same or similar goods. For example, one cannot use the trademark ‘Nikey’ for sportswear. Importantly, one registration has been acquired is when one can prevent others from using the said brand (Higgins, 1996). In fact, it would not matter whether the brand was not at the time particularly established or whether the business had not been launched. In many cases for the most well known brands such as Nike, it is often possible to prevent use in relation even to services and goods that are completely different. However, increasingly there have been problems with company registering a certain trademark and using another in the market. This has led to different kinds of problems as the law states that it is only the sign that is used in the official register that is the trademark of the company. Therefore, the trademark that is used in goods and services but is not registered in the official register is not the trademark of the company and can be used by another company. This has come to be upheld as trademarks are often granted by the national trademark registries, and international brand owners have to hold many registrations for the same trademark. This often gives rise to national differences, however, the international treaties prescribe that there is a need to follow certain principles in order for consistency to be achieved. The fact that only the official embodiment in the official register can be used as a trademark has been opposed by equally a high number of critics. They argue that the trademark law does not belong under the same heading as copyrights and patents (Higgins, 1996). This is despite the fact that they are frequently together and labeled as ‘intellectual property’. The copyright and patents and copyrights are often needed in order to protect the progress of useful arts and science. However, when looked at keenly, the trademark comes out of the commerce law and was initially designed in order to be a consumer protection vehicle and protect the consumers from confusion (Schechter, 1925). For example, one could mistake Cola thinking it was Coca Cola. This has taken a twist over the years and many lawyers have successfully worked hard in order to turn the trademark from a purely consumer protection play into what can be described as more akin to patents and copyrights. This therefore, has granted trademark holders greater limits to what others can do (Jan M. Broekman, 2011). This can be effectively seen in the fact that only the embodiment in the official register can be used as the trademark of a company and not the trademark that is used in the goods and services. Critics have argued that this erodes the real underlying reason as to why the trademark law was formed (Higgins, 1996). For example, the tick that is used in Nike might not be the officially registered trademark however, because it is in the product if often helps the consumers identify the good and therefore, according to critics should be the one that should considered as the trademark for the company. Therefore, the theories that exist behind efforts such as the law above have seemed questionable to some critics and consequently with these kinds of laws, the results are always anecdotal as compared to being empirical. An example can be given about Ben & Jerry’s Ice which sued a porn company for creating porn movies that had used covers that had looked very similar to those that are used by Ben & Jerry for packaging. The porn company had registered this trademark in the official register; however, the covers were not a registered trademark of the company Ben and Jerry’s. In this lawsuit, one can completely see the lack of likelihood that existed in customer confusion, however, as most of the commentators pointed out the theory that was in the lawsuit was more focused on tarnishment (Jan M. Broekman, 2011). This, therefore, made the public ask questions as to whether that could have happened if the covers that were used to package the ice cream were a registered trademark of the company and was recorded officially. Trademarks should be very distinct and companies should make it certain that they do not copy any other persons’s trademark. In the case of Revillon Chocolatier, Société Par Actions Simplifiée v Trianon Chocolatiers B.V., A trademark was being used by three companies namely, cocoa, chocolate and chocolate products. According to the law, this trademark can be cancelled on the grounds that trademark infringement and slavish imitation. The courts rulling was that the companies had to look for a totally different trade mark so as to avoid confusion and had to pay the company Revillion after it proved the validity of its tademark. In this regard, it is vital to understand that any businesses often have distinctive brands and signs but for whatever reason they often do not take the effort to protect their right to excusive sign or name. This is because they often live in a fallacy that by incorporating a company under a certain name or even registering a domain name they often have exclusive rights to use the name as well as the ability to prevent other people from using the name. However, this is untrue and it is just a fallacy (Schechter, 1925). This is because registration of a domain name or a company name does not in itself allow the owner of the registered name to take action when a competitor starts to use a similar name or the same name. In most cases and especially in the 21st century, the ability of a certain business to prevent someone else from using a domain name is often largely dependent on the reputation that is often connected to the name, like how well known it is, and whether or not it is a registered trademark. The business reputation in the market place is what determines the extent to which a business can be able to enforce their rights under the Fair trading Act of the year 1986 or even the common law action in passing of. However, it is imperative to understand that these actions are often very complex and consequently they lead to costly legal bills and often require the plaintiff to identify as well as prove the damage that was suffered under the result of the other trader’s conduct. This system favors big companies that have large revenues (Shilling, 2002). For example, if a company is in a trademark dispute with another small company despite, the small company being right, the size and revenue of the company is what is considered. In many cases, during such lawsuits the subject matter of trademark law which is the sign that is embodied in the official register as opposed to the sign that is applied to the goods in the marketplace is ignored. The case of Ben & Jerry Ice cream clearly sums up this situation. Jerry Ice Cream was of a big reputation as compared to the small porn company. Further, in the same regard as above, when a company operates locally as opposed to nationally and has a strong local reputation, it is possible that other business might establish themselves in a different area using the brand name. For example, in the case of Lego Juris A/S v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Mega Brands, Inc, the major bone of contention between these two parties on that while article 7 prevents from the registration of shapes which are regarded as trademarks, this would illegitimately restrict the competitors since it does not seek the prelude the regsitation of any kind of shape that is performing a technical function. The other competitiors, however, will be forced to look for alternative shapes that will remain unusable.Thus will prevent other companies from their undertakings. This is because one does not have a reputation in that specific area of the country, and therefore, common passing law rights such as the passing off which often rely heavily on the nationwide reputation often leaves one powerless to stop the new business from using the said brand name. However, trademarks offer the best protection (Jan M. Broekman, 2011). This is because when one registers a brand name as a trademark, one often receives a statutory right when it comes to the protection of the name throughout the country regardless of the reputation. If a competitor starts to use the name or even a similar one, the trademark registrations often gives the owner of the said trademark, an easier, quicker and cheaper way to prevent the competitor from using the trademark as compared to the relying of fair trading act of 1986 or an action in the law of passing of. In conclusion, a trademark can be described as a distinctive as well as recognizable brand that can be used by an organization and business as a clear way to identify its products as well as services. In the 21st century, a trademark can take different forms from a symbol, design, term or even a combination of both which is referred to as a brand and identifies the service or the product of the owner. They often establish goodwill between the source of the service or the product and the consumer. They, therefore, uniquely associate the product or service with a particular source. From the above discussion, it is clear that there is a need for companies to use the registered signs that exists in official registers as their trademarks. This is because signs that are used in the products, despite the fact that they are recognized by the consumers are not are not the official trademark of the company and can be registered by other rival companies as their constituent trademark therefore, bringing confusion to a certain product (Colston, 1999). However this explanation of the law has been critiqued by several persons who argue that the law goes against the reason as to why trademarks were formed. The critics argue that the trademark was formed in order to avoid confusion amongst the consumers but has been transformed over the years and it is no longer a consumer protection vehicle. References Cases Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (Case C-299/99) Court of Justice of the European Communities Lego Juris A/S v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Mega Brands, Inc Audi AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) Revillon Chocolatier, Société Par Actions Simplifiée v Trianon Chocolatiers B.V. Journals World Intellectual Property Organization. (2002). Intellectual property on the Internet: A survey of issues. Geneva, Switzerland: World Intellectual Property Organization. Colston, C. (1999). Principles of Intellectual Property Law. New York: McGraw Hill. Higgins, D. M. (1996). The Economic Importance of Trade Marks in the UK. London : McGraw Hill. Jan M. Broekman, ‎. J. (2011). The Semiotics of Law in Legal Education. New York: Sage. Lutzker, A. P. (1997). Copyrights and Trademarks for Media Professionals. London : Collins . Schechter, F. I. (1925). The Historical Foundations of the Law Relating to Trade-marks. New York: John Wiley & Sons . Shilling, D. (2002). Essentials of Trademarks and Unfair Competition. Sydney : Peterson Publishers . Student Press Law Center. (2008). Law of the student press. Arlington, VA: Student Press Law Center. Bender, D., Taylor, R. P., & Practising Law Institute. (2012). Intellectual property law institute, 2012. New York, N.Y: Practising Law Institute. Read More