Running Head: TRADEMARKS 1

TRADEMARKS

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Tutor

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Introduction

TRADEMARKS 2

I agree with the statement that “the goodwill, should lead to a finding that the trade

mark has been infringed.” The basic definition of a ‘trademark’ is given by s.1 (1) of the

1994 Act and appears alarmingly straightforward. Trademarks are infringed by unauthorized

users. This is common in the market where people trade with trademarks belonging to a

different person. The original trademark owner is determined by the goodwill. There are

certain marks that fall in the description of trademark but they are refused registration in

accordance with ss. 3, 4, and 5 of the Act 19941.

A trademark is defined as a sign which is a wide term in scope, meaning anything

which can convey information. A trademark on its own contains three elements. The

graphical representation point and distinctiveness point can be discussed later but the third

element that describes the term is more important. A sign needs a specified format for it to

fall within s. 1(1). It is then considered whether it would fall foul of the inherent bars to

registration, in ss. 3 and 4 of the 1994 Act. This is done to consider whether there are

problems relating to the existence of other marks that may also present a difficulty in the

way of registration according to s. 5 of the Act2.

The criterion follows or clearly equate to the words of Art 2 of the Harmonization

Directive. There is a need for a close examination of the definitions. In order for a mark to be

registered, it should consist of anything with the item in second paragraph of s.1 (1) clearly

being not more than illustrations. There is no mark registered without having satisfied the

1 Andenas, M. (1998). European community law in the English courts. Oxford: Clarendon press.

2 Sakulin, W. (2011). Trademark protection and freedom of expression: An inquiry into the conflict between

trademark rights and freedom of expression under European law. Alphen aan den Rijn, The Netherlands:

Kluwer Law International.

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first two vital but related factors that can be represented graphically and also capable of

distinguishing one trader’s products from those of others3.

The concept of distinctiveness warrants further examination. The capability

requirement of graphical representation creates problem in certain cases. An application

may be rejected if the trademark is not possibly understood without the reference of the

goods. This shows that the mark in all its aspects did not qualify to be represented

graphically Any type of an olfactory map in the intellectual property can also be

represented graphically4.

When the trademark is registered, a third party should be able to find out exactly

what the trade mark is from consulting the register. This is done to avoid infringement and

to find whether another mark can still be registered. The register of Trade Marks must also

know exactly what the mark is in order to carry out its examination and publication role.

Graphic representation should be done on the basis of the register since it is the only

material that is in the public domain and therefore being accessible to third parties. A

trademark should fulfill its role as a registered trademark. It should be perceived

unambiguous and in the same way, for it to be guaranteed as an indication of origin5.

Directive is a clear interpretation of a trademark that consists of a virtual image

which can be represented through a graph, a line ort even through a character. A chemical

3 Schexhter, F., ‘The Rational Basis for Trade Mark Protection’ (1926-7) 40 Havard LR 813-33.

4 Ramkumar, M. (2008). Intellectual property rights demystified. New Delhi: New India Publishing Agency.

5 Ntumy, M. A. (1993). South Pacific islands legal systems. Honolulu: University of Hawaii Press.

TRADEMARKS 4

formula, odour or even a combination of different particles can not satisfy directive

interpretation. Most of the olfactory marks granted do not meet the requirements6.

The rapid expansion of the internet use is bringing new methods to infringe the vital

asset of commercial goodwill that is the trademark. Companies have found an easy way to

exploit competitors’ goodwill in order to stay ahead of them. This is done through attraction

of new consumers on the websites and products. The internet has made it easy for

consumers by allowing them to get information about the new products, compare the prices

and purchase7.

Trademark is one of the methods used by companies to reach their consumers. The

consumers benefit from the trademark search engine on the internet since it allows them to

see more choices regarding their questions on the new products. This practice is perceived

by many companies to be violating the law as it allows competitors to benefit from their

goodwill. Through the use of the goodwill on the internet, it becomes easier to determine

whether the trademark has been infringed. A trademark is thought to be a property right

owned by an individual or a company thus preventing others from using it. A trademark is

the most valuable asset for a company. The extent of a trademark is defined by the extent

of consumers’ perception8.

6 P Torremans, Holyoak and Torremans Intellectual Property Law (Holyoak and

Torremans) (6th edn, 2010) ch 5 and S Th orley, R Miller, G Burkill, and C Birss, Terrell on the Law of Patents(16th

edn, 2006) chs 6, 7, and 8.

7 Philips Electronics BV v. Remington Consumer Products (1998) RPC 283, per Jacob J.

8 Assafa, E. (2010). Intellectual property in Asian emerging economies: Law and policy in the post-TRIPS

era. Farnham, Surrey, England: Ashgate Pub.

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The key policy on protection of trademarks is the protection of consumers.

Trademark owners can use the goodwill to prevent competitors from using their trademarks

to an extent necessary to prevent consumers’ confusion. The purpose of trademark laws

existence is to protect the consuming public from confusion and protecting the trademark

owners’ rights to a non-confused public. According to section 32 of Lanham act, a party can

be liable for infringement of a trademark that is registered for industrial production,

counterfeiting or even a copy right in the approval of goods9.

Unregistered trademarks are protected by the law from infringement in the section

43 of Lanham Act. Unfair competition may also lead to the liability of a party through the

following events. The use is the same as that of the competitor is also a breach of the act.

The description of a false statement may also lead to an infringement or even a breach

more so if the intellectual statement has lasted for a year it becomes an affiliation to the

law. Advertisation of a trademark is a requirement for industrial production of goods and

services in order to prevent the market from any liability caused by the presence of

counterfeits and imitation of goods10.

Trademark applications in the UK are made in respect to specific goods and services.

The register of trademark is a public document that can be consulted by interested parties.

The applicant must provide, by virtue of s.32 of the Trade Marks Act 1994; these include a

request for registration of the mark, a representation of the mark, and a statement that the

mark is used as intended. The application receives an official filing date which helps in

deciding which two marks has priority as in the case of patent. The trademark application is

9 Beatty, J. F., & Samuelson, S. S. (2010). Introduction to business law. Mason, OH: South-Western Cengage

Learning.

10 Blakeney, M. (2009). Intellectual property rights and food security. Wallingford [etc.: CABI.

TRADEMARKS 6

then examined by the registrar to see whether it fulfils the formal legal requirements. The

registry is not responsible for conflicts with earlier registered marks11.

The registrar is allowed to get further details from the applicant if not satisfied. The

application is then published so that other interested parties can oppose or make comments

on the proposed mark. The earlier trademark owner can oppose the registration on the basis

of earlier rights that they have based on earlier registration or unregistered trade marks.

This is done within a period of three months. The registrar deals with the opposition with an

appeal being open to the Appointed Person and to the courts. The registrar accepts the

application if the criteria followed appears to the registrar to have fulfilled all requirements12.

A trademark is granted only to those goods and services on which the application

has been made. The 1994 Act is advantageous as it allows application of goods and services

more than once unlike the old law. Goods and services are classified in accordance with the

nice classification which is an international agreement that splits goods and services into 34

and eight classes respectively. The Nice classification is designed to be comprehensive

covering the whole range of manufacturing and service industry by definition. An example of

nice classification is class 12 that comprises of all vehicles while class 13 comprises of

firearms, ammunition and explosives. Class 32 comprises of beers and soft drinks while class

33 comprises of alcoholic drinks and other alcoholic beers. The European Union has a

community trademark. A community trademark is a single trademark made for the whole

community. Community trademark is applied directly with the European Trade Mark Registry

11 Carvalho, N. P. (2011). The TRIPS regime of trademarks and designs. Austin: Wolters Kluwer Law &

Business

12 C. Morcom, A.Roughton. (2008) The Modern Law of Trade Marks, 3rd ED, London: Butterworths Lexis-Nexis.

TRADEMARKS 7

or indirectly through UK IPO. The application will have to contain the necessary requirements

and other parties will have a period of three months for refusal13.

Goodwill function of a trademark is also recognized by the Benelux Court of Justice,

the European court and the ECJ. The goodwill indicates originality dating from the pre-

harmonization era. The goodwill is up to now recognized by the European trademarks. The

goodwill is protected by the interest function it has in practice. It can go so far that

trademark is, or separated from the products and services on which the trademark is used.

In order to determine infringement of a trademark, reference is made to luxury or fashion

articles and to other goods and services acquiring similar status. This applies to well known

trademarks. The reputation entails that the goodwill of the trademark itself extends to the

affixed product regardless of its nature, the manufacturer of the product and the product’s

technical characteristics14.

The goodwill function as a trademark is also protected by law. The goodwill protects

the trademarks with reputation against unauthorized users taking advantage of the

trademark without a valid reason. In particular, the reputation of the trademark is the

goodwill associated with it. The regulation gives similar protection for trademarks with

reputation in the community. The protection of the reputation of the trademark is attached

to a trademark15.

13 Dawson,N. English Trade Mark Law in the Eighteenth Century-the Fate of Thomas Hill’ 30 92009)1 J Leg

Hist 71-9

14 D.Kitchen, D.Llewelyn (2005) Kerly’s Law of Trade Marks and Trade names, 14th ed, London: Sweet and

Maxwell.

15 Herrington, T. A. K. (2001). Controlling voices: Intellectual property, humanistic studies, and the Internet.

Carbondale: Southern Illinois University Press.

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The most fundamental benefit of a trademark that is registered is the advantages

which users benefit from the license. The fundamental becomes the cornerstone into which

licensing trademark is built. The developed goodwill in the usage of the trademarks with the

owner incases where the license is well prepared monitoring the relevant territory. Goodwill

is affected by different factors that includes control derived from giving licences to

countries such as Malaysia and Thailand.

Europe is concerned with exhaustion of rights. Trademark licensing is enabling

control of contracts that give the long term benefit of using a licence. This contract can also

be used to import goods from other countries in Europe and also prevent illegal trade of

goods. This is a benefit to the manufacturers who are not Europeans and those who can use

the trademark license within Europe. The license prevents importation of goods that are

marketed outside Europe. The European company is in a capacity to license the use of the

trademark in areas outside the community and also prevent parallel importation from those

territories. Some trademark owners in countries like Australia have laws which recognize the

usage of copyright to prevent illegal trade of goods that lack trademark. This supports the

statement that the goodwill should lead to finding that the trade mark has been infringed.

This is made possible by the recognition of a goodwill which is the most valuable asset of a

business. The goodwill consists of rights and other references attached with the trademark

making it easier to lead in cases of infringement16.

Trademarks History

Trademarks in the ancient times in Rome and in recent times are viewed as

important symbols that show the origin of a product through indicating the quality of the

product associated with it. Trademarks in Roman times were used in pottery to show the

owner of the innovation and it is the same even to date. Most owners of a given invention

16 Holyoak and P. Torremans. Intellectual Property Law. 6th ed. London, Oxford University Press.

TRADEMARKS 9

tend to use their names in creating their trademarks or brands. A good example is the

founder of Ford cars whose real name was Ford. Trademarks through history were viewed as

important parts of the private sector where the owners would design trademarks or brands

to their products; this led to the need for owners to get legal approval for their brands to

avoid replication and multiple ownership of the same brand.

Trademarks came during industrialization and the legal sector could not provide the

required services in obtaining a trademark in the rapidly changing society. This therefore led

to the need for both the state and a formal system that could help form a central system. A

bill on trademarks was considered by the government in 1862 but did not get approval due

to doubts as to whether a transferable and formal legal right could be appropriate in

reflecting the nature of a trademark that in most cases was a personal opinion of the

inventor. In addition, the state was in the process of designing a common law since it did not

have one in place. During this time, there were high cases outside Europe of deliberate

counterfeiting than in Europe; this led to the argument whether designing the trademark law

in Europe would help solve the deliberate counterfeiting outside Europe. However, there was

built up pressure from the people (consumers) who were in favor of creating a brand or

trademarks Act; this demand had to be fulfilled through passing the 1875 Trademark Act.

The European Union approach on trademark laws was developed in decisional theory

of law that was aimed at preventing the distribution of genuine goods by anyone who was

using a trademark that belongs to other companies. This was viewed that if not protected,

such kind of trade would become distorted by member states. The case that brought about

this European view involved a Dutch owner of a trademark who was the sole manufacturer

and distributor of drugs in Holland and England. This case was presented in the European

law Court EEC. The court held that even though there is the EEC treaty which provides that

there are trademark rights that are provided to member states, the flow of goods and

products is exclusive only to the owner of the trademark. It protects the owner of the

trademark from competition where his competitors may sell products using his trademark

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illegally. This right is exhausted when the goods are placed into the market with the consent

of the owner where other people are granted the right to sell the goods bearing the

trademark. This principle is called ‘exhaustion of rights’ which was adopted in respect to

trademarks and it is only applicable at regional levels.

According to trademark law in the UK, infringement occurs when a sign becomes

identical to an already registered trademark used without the authority of the owner in

services and goods provision. Infringements occur in two cases; the first case is where the

trademark or sign is made use of when relating to goods and services that are slightly

different from the original goods in one way or the other. The other instance is if the sign is

registered as a trademark while it appears similar to another existing trademark. In this

case, the services and goods are similar to the goods and products manufactured by the

original trademark inventor. The two cases provide the requirement that the consumer may

tend to become confused when trade of the two types of goods get into the market. The last

form of infringement can occur where a person using the trademark sells different kinds of

goods while using a reputable trademark17.

According to Paul Torremans, the establishment of international companies has led to

further complications of the international law of private ownership. This has raised more

complications with the use of internet where trademarks earlier used at national level are

now accessible at international level through websites where copyright materials can be

easily distributed, copied and communicated internationally without borders. Although

trademarks have been licensed to become legitimate for any transitional activity for a long

period of time, questions are rising on applicable law and jurisdiction with the use of

internet.

According to TRIPS Article 15(2) and the Paris Convention, member states of

European Union should not provide protection for trademark rights in descriptive terms. This

17 Laddas & Parry. (2011). Preventing Parallel Imports under Trade Mark law. Retrieved from: http:/www.laddasparry.com. Retrieved on: 02-09-2011

TRADEMARKS 11

should be done regardless of any distinctiveness required. However, the member states

must implement the commercial requirement use for cases of infringement on trademark.

The TRIPS 16(10) provides that the member states must prevent the use of trademarks

which may cause confusion or the likelihood of creating confusion in any trade transaction.

This provision exempts a person from making use of a trademark in speeches or non-

commercial expression. This is a way of helping to safeguard the owner of the trademark

from his invention being made use of by other people during trade. However, any person

found using another person’s trademark in trade is answerable to court. The enactment of

speech free advocates in the new agreements in the European Union require that more

protection should be offered to well-known trademarks in efforts to reduce the state of the

speeches act that is found in the trademark laws of member states. This helps to provide

more protection to trademarks from domestic misuse than provided in the TRIPS or Paris

Convention.

Most courts of member states have their laws flexible in comparison with the TRIPS

provisions which provide that trademarks should be protected from being used in speeches.

In this consideration, the Paris Convention and the TRIPS provide the member states with

more flexibility on whether they should decline or adopt the system in trademark that

provide protection for property-like or expansive trademarks.

Lastly, member states courts have flexibility in the TRIPS treaty where they can

enforce provisions that provide remedies for trademarks in efforts to protect speeches. A

good example here is the case where the courts award disclaimer or damages in granting

injunction in lieu. These provisions and others are given also in the Paris Convention and

TRIPS where member states can decline to adopt flexibility through refusal to adopt the

system of trademark that provide property-like and expansive protection for trademarks if

this way will affect the free ideas and information flow.

Need For Reforms

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By 1990, the government white paper provided information about the need for

reforms in the European trademark laws. This paper acknowledged that most of the

recommendations made by the Mathys Committee were not implemented and there were

other factors such as Europeanization that called for reforms. The EU trademark law was

influenced by two types of directives. The first one was on the 1988 directive which was

aimed at harmonizing the member states trademark laws in order to eliminate any potential

barriers in efforts to encourage free trade in the region. This was aimed at reducing

duplication of trademarks for similar products. This directive was to be complied with by the

end of 1991 but the deadline was missed by one year leading to a one year extension which

was later enacted in 1994.

The second aspect was that EU was designing trademarks to be used in the

community-wide level; this was unique from the member states trademarks. This law was

passed in 1994 after deliberating and conducting extensive research and the community

trademark headquarters were established in Spain. This law was aimed at reducing

duplication of trademarks in the region where each established company would get a unique

trademark which was to be approved and used by one owner in the region. This was a way

of curbing the illegal use of trademarks by competitors before the products are introduced

by the owner in the market. This therefore provided that anyone using the trademark

illegally would be made to face the law.

The third aspect that determined the reforms in 1994 was that internationally,

trademarks and trade was constantly taking new shapes and forms from time to another.

This meant that there was need for the international rights of trademarks to take different

forms in order to be able to meet the requirements of trade and trademarks in the dynamic

trade processes. The provisions of Madrid Agreement are the root for international

trademark register whose headquarters are based in Geneva which is maintained by (WIPO)

World Intellectual Property Organization. This system however, was not successful since the

international laws reflected continental approaches rather than approaches of common laws.

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Due to the need for harmonization, a protocol was added in the Madrid Agreement making it

possible for countries such as UK to be able to design their trademark laws in line with the

international provisions. Intellectual property laws are granted at national level in line with

the international statutes of property. However, there are cases that property rights can

become exploited at international levels; this give rise to the problems of jurisdiction in

cases of infringement.

Why Trademarks?

The law of trademarks aims at achieving the balance between different competing

interests of corporate and individuals. It aims at promoting the reputation and image of the

inventor and his goods from other traders who are his rivals (to promote a society based on

free competition). The law however also prohibits the creation of monopoly where the

trademarks of given products are confined to limits reasonable so as not to limit fair

competition. The interest of the consumer also is important in that he/she tends to associate

with quality products or services that are identified using the trademark, logos or brand

names. These helps the consumer not to get confused by logos, trademarks or brand names

placed in different position especially for inferior products or services.

From a general point of view, trademarks evolved from the private sector where the

aim was to protect principal interests by the use of trademarks. The protection offered by

the trademarks is aimed at protecting the interest of the consumers. This is achieved

through indicating the origin of the product which helps the consumer to get to buy the

product from his most preferred manufacturer. This is the core function of trademarks which

must always be taken into consideration when designing new trademark laws: to protect the

consumer interests from rival companies18.

18 Landes,W, and Posner, R., “Trade Mark LAW: An Economic Perspective’ 30 (1987) 2 Journal of Law and

Economics 265-309

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In the modern society, the significance of trademarks in commerce is that

trademarks helps the consumers in identifying the kind of goods to purchase based on his

interest and views of the producer company. Product or brand names such as Coca-Cola,

Guinness are important assets to the producer which must be protected by them. In the

future, it is anticipated that the emergence of flexible trademark laws will help create more

registrations of trademarks that were not registered earlier adding more value to the sector

of trademarks and infringing laws19.

Conclusion

The history of trademarks is dated very early in the life of man and its uniqueness is

that it is fashionable and commercial. Over a long period of time, laws regarding to

trademark have been harmonized in UK Europe and in 1994 Act, there were changes in

trademark laws. This was as a result of many cases regarding the laws of trademarks which

led to the need to further clarify the trademark law leading to creation of new systems.

Trademarks can be described as pro-competitive where the producer of goods can

distinguish his goods from his competitor using his own unique trademark. This also helps

the consumer to be able to identify the company which he/she can get quality goods and

services, while setting the producers apart to compete for the interest of the consumers.

The trademark therefore helps the producer to create goodwill for his product and to the

consumer; it operates in relation to the consumer and the right holder interests; the two are

important in designing trademark laws.

19 Lisa P. Ramsey. (2010). Free Speech and International Obligations To Protect Trademarks. Retrieved from:

http:/www.

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References

Andenas, M. (1998). European community law in the English courts. Oxford: Clarendon

press.

Assafa, E. (2010). Intellectual property in Asian emerging economies: Law and policy in the

post-TRIPS era. Farnham, Surrey, England: Ashgate Pub.

Beatty, J. F., & Samuelson, S. S. (2010). Introduction to business law. Mason, OH: South-

Western Cengage Learning.

Blakeney, M. (2009). Intellectual property rights and food security. Wallingford [etc.: CABI.

Carvalho, N. P. (2011). The TRIPS regime of trademarks and designs. Austin: Wolters Kluwer

Law & Business

TRADEMARKS 16

C. Morcom. (2008) The Modern Law of Trade Marks, 3rd ED, London: Butterworths Lexis-

Nexis.

Dawson,N. English Trade Mark Law in the Eighteenth Century-the Fate of Thomas Hill’ 30

92009)1 J Leg Hist 71-9

D.Kitchen, D.Llewelyn (2005) Kerly’s Law of Trade Marks and Trade names, 14th ed, London:

Sweet and Maxwell.

Herrington, T. A. K. (2001). Controlling voices: Intellectual property, humanistic studies, and

the Internet. Carbondale: Southern Illinois University Press.

Holyoak and P. Torremans. Intellectual Property Law. 6th ed. London, Oxford University Press.

Laddas & Parry. (2011). Preventing Parallel Imports under Trade Mark law. Retrieved from:

http:/www.laddasparry.com. Retrieved on: 02-09-2011.

Landes,W, and Posner, R., “Trade Mark LAW: An Economic Perspective’ 30 (1987) 2 Journal

of Law and Economics 265-309

Lisa P. Ramsey. (2010). Free Speech and International Obligations To Protect Trademarks.

Retrieved from:http:/www.

Ntumy, M. A. (1993). South Pacific islands legal systems. Honolulu: University of Hawaii

Press.

Philips Electronics BV v. Remington Consumer Products (1998) RPC 283, per Jacob J

P. Torremans & Fawcett. (2011). Infringement: Preliminary Matters. 2nd ed. Retrieved from:

http:/www.conflictoflaws.net. Retrieved on::02-09-2011.

P Torremans, Holyoak and Torremans Intellectual Property Law (Holyoak and

Torremans) (6th edn, 2010) ch 5 and S Th orley, R Miller, G Burkill, and C Birss, Terrell on

the Law of Patents(16th edn, 2006) chs 6, 7, and 8.

TRADEMARKS 17

Ramkumar, M. (2008). Intellectual property rights demystified. New Delhi: New India

Publishing Agency.

Sakulin, W. (2011). Trademark protection and freedom of expression: An inquiry into the

conflict between trademark rights and freedom of expression under European law.

Alphen aan den Rijn, The Netherlands: Kluwer Law International.

Schexhter, F., ‘The Rational Basis for Trade Mark Protection’ (1926-7) 40 Havard LR 813-33.