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Definition and protection of trademarks

Discuss about the Essay for Property Law for Law of Intellectual Property?

i). Trademarks are considered to be words, symbols or even devices that are made use of to identify goods that are manufactured or distributed so as to distinguish one product from another.  A service mark is also identified as a trademark for identifying different services.  For example, if looked into the field of computer applications, the hardware as well as the software is classified as products while repair, installation and instructions are called services.  Trademarks thus take into account both of these aspects and are also often synonymous with brand.  Other the name, trademarks can also include recognizable aspects such as sounds, like the three note signature signoff shown in the NBC network, colors such as pink which is used for home insulation, packaging as is seen in Tiffany Wrappings. Thus trademarks can be categorized as the signs or symbols that are used in the due course of the trade for the purpose of being able to identify the origin of the services or the gods that are being made available to the consumers[1].  The most integral part of the consumer society is is to ensure that the customers are able to distinguish the products that are being made available to them from the other competitors that are present in the market.  it further helps a consumer to come back to a product that they have found satisfactory and to let go of one that they have not found to their liking.  There are two basic steps to safeguarding a trademark, and they include registering the trademark or by an action in tort for passing off.  When it comes to registered trademarks, the basic criteria for protection include the presence of graphical representations that would enable the consumer from distinguishing one product from another the undertaking of another.  Registration is important since it gives the individual registering their trademark, a right to prevent others from making use of their trademarks as stated in the legislation in Trade Marks Act 1994[2].  

As per the given scenario, the question is to see if the name, "Newcastle Brand" can be registered for selling coal. However, the name is already a well established unregistered mark recognised as a leader in it field of quality low emission coal.  Now the question here is because the name s unregistered as a trademark, can it be utilized by someone else who wants to sell similar products?  In most countries, well known trade and service marks enjoys a lot of protection against reproduction, direct imitations or even translation that may create confusion in the mind of the public regarding the originator.  Well known marks are protected despite their registered ro unregistered nature in respect to goods and services which are either identical, or similar to for which the brand name or the trade name has gained reputation.  Some countries even extend the protection for dissimilar goods in case of well known marks, Thus to reach a common ground the WIPO joint recommendation on the protection of well known marks are followed[3].  Thus it may be stated that Newcastle brand may not be used for selling coal since the name is already well established and renowned in the field of low emission coal.  This is also the right step to be taken to stop reverse confusion wherein.

Criteria for a valid trademark

ii) For a valid trademark. A sign needs to have the capacity to convey information. This is followed by necessary aspects such as precision, self-containment, clarity, objectivity and durability for the competitors as well as the registrar to know the areas that have been covered, the necessity here is to make a mark graphically which is very difficult when it comes to smells.  The very first application for Olfactory marks that was brought about after the TMS 1994 was enforced and which remained unsuccessful was the case of registering the fragrance, Chanel No5 as an olfactory mark.  The reason for the failure of the application was based upon Article 7(1)(e) of CMTR which requires that to be registered as a trademark, shapes should not have the power to provide value to the goods in themselves.  Since in case of fragrances, the primary purpose of the function is to emit the fragrance the smell of the perfume becomes the good in itself and thus it cannot function as its trademark[4].  In the case of Sieckmann v German Patent and Trademark Office, the scenario revolved around a methyl cinnamate scent that was described as “balsamically fruity with a slight hint of cinnamon”[5]. The European Court of Justice (ECJ) decide to uphold the decision of the German national court and refused registration of the trademark of the described scent because the EJC found that the definition of said trademark in the directive was not enough to be termed exhaustive along with the fact that to describe an odor in words would be imbued with subjectivity. This could be interpreted completely differently by different individuals[6].  Moreover describing the chemical formula of a fragrance does not in itself describe the fragrance.  Why does the ECJ place the qualification that a trademark must be spoken to graphically and clearly to constitute an enlisted trademark? In single word the answer is "certainty". A Trade Mark Registration is a restraining infrastructure right, an amazingly solid legal weapon, giving the holder the restrictive right to utilize that trademark or to keep its utilization and the utilization of similar trademarks. A viewer of the Register, usually a potential competitor, must have the capacity to decide in a clear and certain way what the enrolled trademark speaks to. A smell can be contrasted to a tune, which can be demonstrated graphically as a musical score. Although the ECJ held out the likelihood that anything can act as a trademark including a smell, given that a smell is near difficult to depict in a clear and compact manner with present innovation, the likelihood of registering a smell would appear to be discounted. Until innovation has advanced to "smell a trade mark out", intrigued organizations may have to be satisfied with registering the words, shapes, musical tunes and logos under which they market their items and services[7]. Thus keeping in mind the above discussion, it may be stated that the smell of "Amour perfume", which is described by experts as "Lavender with a hint of spice", cannot, as a scent, be registered as a trademark.  

Olfactory marks

iii) A trade name is the name of a corporation, partnership, or other element or organization and symbolizes the reputation and personality of that element rather than its particular goods or services. Security of trademarks and trade names are interwoven. In this way, utilization of a party's name as a identifying mark on its goods or services might constitute trade name encroachment, and the converse could be valid also. Incorporation under state law or reservation of a corporate name or recording as an invented name does not make rights that seize a prior trademark client and government registrant of a trademark. A name or image that serves as a trademark might likewise be utilized as the trade name or corporate name or a portion thereof to recognize the matter of the proprietor of the imprint[8]. A trade name is comparable to a trademark or administration check yet symbolizes the reputation of the business substance rather than particularly distinguishing its goods or services. For instance, Coca Cola is a trademark while "The Coca Cola Company" is a trade name and corporate name. It is important under the invented name statutes of numerous states to record a name under which a substance works together if that name varies from the legitimate name of the business. There are certain rules that need to be followed when it comes to naming a new organization and registering the same[9].  For example, the chosen name cannot be the same as another registered company.  Nor can it be too similar to another company under the same domain.  The name may not use sensitive expression unless it has prior permission. Or suggest a connection with government or even local authorities, or be offensive.  Most importantly, the business name in some form should be able to provide some idea regarding the nature of the business that it represents[10].  When it comes to the given question of whether or not “client inform” is an apt name for a software package which automatically texts clients of solicitors and accountants with progress details of their cases, it may be said that the name does in a way depict an understanding of the fact that the product or the service since “client inform” gives the users an understanding of the fact that the software package will be utilized to provide them with some information, and in this case these are automatic texts to the clients of the solicitors regarding the details of the case.  Hence as long as any other legal firm or known organization, product or service has already utilized or registered the name, the chances of securing a registration for this name remains clear and high.

Trade names and their relationship with trademarks

iv) These relative grounds for refusal of a trademark are present under the section 5 of the Trademarks Act 1994. This relative ground for refusal tends to occur when the mark that is being considered for the undertaking is also being used or has a similar one in use. This particular law can be subdivided and is applied when either the sign in question has to be identical to an earlier sign and here the goods and services are also identical, or the sign remains similar to an earlier sign and the goods and services are similar.  For identical signs for idential goods and services, the law in the UK  under Section 5(1) of the Trade Marks Act 1994 states that the wording makes it clear this procurement is entirely for circumstances where the sign being utilized is indistinguishable and the goods or services that are being sold under the sign are likewise indistinguishable[11]. The European Court of Justice holds that the test for indistinguishable signs requires that the sign imitates all components of the registered trade mark with no adjustment or expansion. A caveat to this is if the sign just contain inconsequential contrasts it will in any case consider indistinguishable[12]

For similar goods and services, then Section 5(2)a of the Trade Marks Act 1994 might be relevant. This holds if the goods or services are comparable then there might in any case be reason for refusal. While evaluating the goods or services being referred to the category of goods is important just like the normal customer of those goods or services. Factors mulled over include: the nature of the goods or administration; the customers; how the goods or services are to be utilized and whether or not the goods or services contend with the ones sold under the registered trade mark[13]. When in doubt if the goods or services are sold in the same market as those sold under the registered trade mark they will be considered for the comparative goods[14].

While naming alcoholic beverages, there are five very important rules that need to be kept in mind.  Firstly, even though it is not a rule per se, yet it is considered that all alcoholic beverages are related.  If the mark or the name of the product describes any possible thing about the product then a refusal to register the same is to be expected.  The name or the mark should not have any foreign equivalents or clash with foreign registered marks, or names, translations or similar depictions. Lastly, no two marks can connote the same commercial impression[15].

Naming a new organization

Skullcracker beer is already present in the market and is a registered company that sells beer and has a cracked skull as a logo[16].  Similarly, Vodquila and Absinthe are also brands that depict the image of the skills with their brands and their bottles respectively.  Also the flaming skull logo belongs to the motorcycle riding club[17].  This would bring about infringement of trademark under IP law as per section 5(1) and 5(2) respectively, especially since Hells Angels are a renowned brand and there have already been lawsuits filed for others trying to use the flaming skull for a trademarked logo.  However since the name “Gearhead” does not hold any resemblance to alcohol or alcoholic effects whatsoever, it might pass the chances of clearing registration.

Alcoholic Beverages Law, 'Five Important Trademark Lessons The Beverages Trade Learned In 2014 - Alcoholic Beverages Law' (2015) <https://www.alcoholicbeverageslawblog.com/2015/01/articles/alcohol-and-liquor/five-important-trademark-lessons-the-beverages-trade-learned-in-2014/> accessed 25 February 2016

Alexander M and Marino C, Trademark Questions And Answers (Kilipatrick Stockton LLP 2015)

Annand R and Norman H, Blackstone's Guide To The Trade Marks Act 1994 (Blackstone Press 1994)

Bainbridge D and Howell C, Intellectual Property Law (9th edn, Pearson Longman 2012)

Bently L and Sherman B, Intellectual Property Law (Oxford University Press 2001)

Buckworths.com, 'All You Need To Know About Trademarks | Buckworths' (2016) <https://www.buckworths.com/all-you-need-to-know-about-trademarks/> accessed 25 February 2016

Davis J, Intellectual Property Law (Oxford University Press 2008)

Denoncourt J, Intellectual Property Law (Routledge 2010)

Denoncourt J, Intellectual Property Law (New York, NY 2012)

Edenborough M, Intellectual Property Law (Cavendish Pub 1995)

Factor M, 'Innovation, Intellectual Property, And Economic Growth' (2011) 6 Journal of Intellectual Property Law & Practice

Groom J, UK Trade Marks Act 1994 (Longman 1994)

Hart T, Fazzani L and Clark S, Intellectual Property Law (Palgrave Macmillan 2006)

Holyoak J and Torremans P, Intellectual Property Law (Butterworths 1995)

Inbrief.co.uk, 'Trade Marks Relative Grounds For Refusal' (2016) <https://www.inbrief.co.uk/intellectual-property/trade-marks-relative-grounds-for-refusal.htm> accessed 25 February 2016

Isaac B, 'Merchandising Intellectual Property' (2008) 3 Journal of Intellectual Property Law & Practice

Isaacs N, The Trade Marks Act 1994 (University of Exeter 1997)

Johnson P, 'Federalism And Localisation In Intellectual Property Law-Making' (2014) 9 Journal of Intellectual Property Law & Practice

Justia Trademarks, 'Skullcracker Beer Just Wait Until The Morning!' (2013) <https://trademarks.justia.com/854/81/skullcracker-beer-just-wait-until-the-morning-85481096.html> accessed 25 February 2016

Kitchin D, Mellor J and Jacob R, Trade Marks Act 1994 (Sweet & Maxwell 1995)

Marett P, Intellectual Property Law (Sweet & Maxwell 1996)

Morcom C, Roughton A and Graham J, The Modern Law Of Trade Marks (Butterworths 1999)

Morcom C, A Guide To The Trade Marks Act 1994 (Butterworths 1994)

Neethu R, 'Braiding Intellectual Property Law With Human Rights' (2014) 9 Journal of Intellectual Property Law & Practice

Norman H, Intellectual Property Law (Oxford University Press 2011)

Novagraaf.com, 'Law-Abiding Outlaws: The Hells Angels Approach To Trademark Rights' (2016) <https://www.novagraaf.com/en/news?newspath=/NewsItems/en/law-abiding-outlaws-hells-angels-trademark-rights> accessed 25 February 2016

Spiers D, Intellectual Property Law (Dundee University Press 2009)

Stim R, Patent, Copyright & Trademark (Nolo 2010)

Wilson L, The Pocket Legal Companion To Trademark (Constable & Robinson 2012)

Wipo.int, 'Well-Known Marks' (2014) <https://www.wipo.int/sme/en/ip_business/marks/well_known_marks.htm> accessed 25 February 2016

[1] Miles. J Alexander and Charlene. R Marino, Trademark Questions And Answers (Kilipatrick Stockton LLP 2015).

[2] Richard Stim, Patent, Copyright & Trademark (Nolo 2010).

[3] Wipo.int, 'Well-Known Marks' (2014) <https://www.wipo.int/sme/en/ip_business/marks/well_known_marks.htm> accessed 25 February 2016.

[4] Helen E Norman, Intellectual Property Law (Oxford University Press 2011).

[5] Miles. J Alexander and Charlene. R Marino, Trademark Questions And Answers (Kilipatrick Stockton LLP 2015).

[6] Lee Wilson, The Pocket Legal Companion To Trademark (Constable & Robinson 2012).

[7] Miles. J Alexander and Charlene. R Marino, Trademark Questions And Answers (Kilipatrick Stockton LLP 2015).

[8] Duncan Spiers, Intellectual Property Law (Dundee University Press 2009).

[9] Tina Hart, Linda Fazzani and Simon Clark, Intellectual Property Law (Palgrave Macmillan 2006).

[10] Janice Denoncourt, Intellectual Property Law (Routledge 2010).

[11] Christopher Morcom, A Guide To The Trade Marks Act 1994 (Butterworths 1994).

[12] John Groom, UK Trade Marks Act 1994 (Longman 1994).

[13] Ruth Annand and Helen E Norman, Blackstone's Guide To The Trade Marks Act 1994 (Blackstone Press 1994).

[14] Jennifer Davis, Intellectual Property Law (Oxford University Press 2008).

[15] Alcoholic Beverages Law, 'Five Important Trademark Lessons The Beverages Trade Learned In 2014 - Alcoholic Beverages Law' (2015) <https://www.alcoholicbeverageslawblog.com/2015/01/articles/alcohol-and-liquor/five-important-trademark-lessons-the-beverages-trade-learned-in-2014/> accessed 25 February 2016.

[16] Justia Trademarks, 'Skullcracker Beer Just Wait Until The Morning!' (2013) <https://trademarks.justia.com/854/81/skullcracker-beer-just-wait-until-the-morning-85481096.html> accessed 25 February 2016.

[17] Novagraaf.com, 'Law-Abiding Outlaws: The Hells Angels Approach To Trademark Rights' (2016) <https://www.novagraaf.com/en/news?newspath=/NewsItems/en/law-abiding-outlaws-hells-angels-trademark-rights> accessed 25 February 2016.

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