A trademark may be any word, logo, phrase, drawings, colours, patterns, symbols, images, packaging of goods, design, fragrances, shapes or even a sound. Registering a trade mark gives to people exclusive rights over those distinctive signs. Those signs identify specific products and this is the way of how consumers differentiate them from others. The word trademark includes both trademarks but also service marks. Service mark is used for services while the word trademark responds to goods.
The protection of trade mark usually takes 10 years with the first day being the day of the trade mark application. Every 10 years the trade mark protection can been renewed. Trade marks are exlusively used by its owner or they can be selled. There is also the option to license to some other party to use it in exchange with payment. Trademark registration confers lecal certainty and strengthes the postition of the owner and the protection can apply through court orders.
The protection that a trade mark needs, depends on the country that the trade will take place. If the trade takes place only in a national level, then the protection that will be given is only from that country.
The process is to file an application to registrate with the national trademark office and then pay the required fees. In contrast, if the protection that needed is for all European countries, then the trade mark sould be registered with the European Union Intellectual Property Office (EUIPO). Lastly, if the protection that needed is international, the trade mark can be registered with the World Intellectual Property Organisation (WIPO) or a trademark application can be filed with the trademark office of each different country where the protection is wanted.
The idea of creating a distinctive presence in the market is not limited only in individual businesses but is extended to more, as cities, areas or even countries can depend on the IP system to make a unique identity. For instance, “destination branding” is called the effort which different regions make so they can create a distinctive appeal which will be produced between visitors. They make that by depending on trademark, by virtue of a registered logo or by a tagline.
Some examples of the destination brading are the “St. Moritz” or the “I love NY” logo. The mountain resort in Switzerland St. Moritz, registered its name as well as the tag line “Top of the World” not only in a native level but also in the Office of Harmonization for the Internal Market, the Trademark Office of the European Community. Furthermore, “I love NY” logo is famous around the world as people identify the New York City with it.
Moreover, there are the certificate trademarks which are famous in the field of tourism industry as smaller businesses are able to get a certain distinctiveness and visibility through the application of such marks. Those trademarks “certify” that the user of the trademark complies with certain stipulated criteria. There is a number of authorities that lend their logos to enterprises in the tourism sector, certifying that they have complied with such criteria as are important for tourists. An example of that is the Green Globe Certification which is a global “eco-tourism label” that promotes sustainable tourism.
In addition, there are the collective marks. With those, also small businesses acquire visibility and distinctiveness. One example is the registered trademark of the Fédération Nationale des Logis de France, “Logis de France”. With this, independent hoteliers are tied together through an association to promote hotels in a grouped rural environment under the same tag. This contributed to prevent the abandonment of the rural areas and to improve the value of those individual establishments as well as to esnure their recognition.
A really related interesting topic is the franchising which describes a situtation when the person who owns the business gives the permission to some other people to make the same business model. In this case, the trademark and other related intellectual properties which are undivided to that business are applied. Those businesses that are franchised, have already created a strong name which is recognised in the business world. Therefore, the franchises are able to have a strong new start as they are getting into business. In the tourism field, the franchising is really important as it is an easy way for the industries to grow fast.
In addition, merchandising describes a situtation when the person who owns a trademark, industrial design or a copyright gives the permission to some other to apply it, most of the times in common consumer goods to improve the attractiveness of the products in question. Merchandising helps the owner of those rights to make a profit as the licensee can improve the value and consequently recognition of the products so in the future they could be sold in a higher price.
The next topic is about Trademark Coexistence which happens when an identical trademark is used by two different enterprises with the object to market a product or a service with no intention to interefere in business of the other side. This situation is really common as there are many small businesses whose geographical working area is limited. In addition to that, some businesses own the name of the individual who began the business and because many names are the same, many businesses work with the same or similar name. There is not any problem related to a conflict or litigation when trademarks keep reflect the main function of their own business so the goods and services are distinguished from the ones of their competitors. However, some problems seem to start when an overlapping happens of the businesses for which the trademarks were originally used. This has as a result the distinguishing function to not work anymore. The dangerous part is when trademarks which used to coexisted together, starting to get into a conflict even if they use them in good faith. This may happen because as they expand, they trespass on each other’s areas. To avoid this, an agreement can be created between companies with similar trademarks.
When a bussiness is about to register a trademark, it is necessary to make a complete search therefore it will avoid any problems with other companies on the market in the future. The search should not only limited around registered marks but also unregistred as many trademarks have a strong protection while they are not registered.
In common law jurisdictions the idea of “honest concurrent use” is applied. It means that it is important for how long the trade is being used, the geographical region, the nature and other factors are taken into account. For instance, a period of simultaneous use of five years of the mark is enough to overwhelm any contrast so two marks could exist together. A really important factor which is taken into account is the possibility to confuse the consumers as in a small geographical area that is really possible. Therefore, this makes the concept of “honest concurrent use” an exception and not the rule.
As it was mentioned, businesses can make an agreement so they can exist together in the market place with their agreed terms. It is really important for the businesses, through the agreement to mention their field of business and try to stay in this area. A clause should also be included on dispute settlement in case of any arising problems between the two parties.
However, even if an agreement exists, if things get difficult and end up to the court, the court can abrogate any agreement of trademark coexistence if it is against the public interest. Therefore, the best solution for companies is to try to foresee any upcoming problems, maybe with the contribution of a specialist so any conflict would be avoided.
European trademark is applied to all European member states and it is the better way for a trademark in Europe to be protected. Any individual or any company have the chance to apply for a European trademark. If the base of the individual or the company is located in a country in the European Economic Area, which includes all European Members as well as Norway, Iceland and Liechtenstein, it is not necessary to have a professional representative. On the other side, companies or individual who are not in the European Economic Area, are required to have a professional representative to keep on with all the proceedings before the office. If no probems arise during the examination of the trademark application, then the trademark could be approved early, maybe less than a week. The examination is taken place in Alicante, Spain by EU trademark office which is called “European Union Intellectual Property Office”(EUIPO).
The application needs to be filed in two languages. The first one could be any of the EU’s official languages but the second should be one of the five official lanfuages of EUIPO, which are Enlgish, German, Spanish, Italian or French. Hoewever, in practice, tha information of the application does not need to be filed in the second language as it is enough that this language is just nominated. All relevant parts of the application will be translated by the EUIPO.
The application for an EU trademark can be filled at EUIPO’s online platform by fax, letter or even in person at the desk in Alicante. The necessary information that is needed for the application must contain firstly the request for the registration of EU trademark, the informaton that identifies the applicant, a list with all the services and goods for which the registration is needed and the trademark’s graphical representation.
After submitting the application, the application fee needs to be paid within 30 days. If the payment does not happen, then the EUIPO will bring an “office action” which it is called a “notification” and the filing date will be considered as the date that the fee was paid. The fees vary. The amount depends on the type of filing, if it is electronic or non-electroning and on class. The notification determines a time limit in which a response should brought. The time limit is usually a two-months-period and it can only be extended if the applicant makes a written request before the end of the limited period.
Lastly, if the trademark gets accepted, the application will be published by EUIPO and after that, other parties have the chance in a period of three months, to demand that this trademark should not be accepted. If there are claims against the trademark, then the registration is final.
In the case that the application is rejected, there is the right of appeal which should be submitted in a two-months-period after the decision. The reason of appeal should be submitted in a four-months-period. The fee of the appeal is 720 euros and it will be examined by the “Board of Appeal” and if they regard that the first decision of rejecting was correct, then a decision will be issued regarding the rejecting of the appeal. However, after that there is the chance for an appeal to the General Court of the EU and then to the Court of Justice of the European Union.
The examination of EUIPO focuses on issues like classification. For example, the list of goods and services of the company should be accurate and conform with the international trademark classification system which is called “Nice Classification”. Also, all the EU trademark laws and practices must be fulfilled.
There are two basic requirements that should be fulfilled, the distinctiveness and descriptiveness. The first one means that a consumer would be able to distinguish the goods and services of the company between those of others. That means, that common international words are not considered as distinctive. However, even if a word in most EU languages is distinctive but in only in a language is not, then the application will not be accepted. The second one is descriptiveness, as the mark cannot be accepted when there is a description of the “kind, quality, quantity, intended purpose, value, geographical origin of the goods or the service”. There is a common misconception that is more effective when the trademark describe the goods or services. Instead of that, constructive and unique trademarks are certainly more effectual. The descriptiveness needs to be direct so it could be understood without further thinking. It is taken into account how a fairly well-informed, attentive and observational consumer could assume the mark and also the mark should not be misleading.
EU trademark is undivided, which means the ptorection covers the whole union. If any issues arise with a single country, then the EU trademark cannot be registered. The existence of EU trademark system shows that it is the cheapest and easiest way to protect a trademark across Europe.
To sum up, when a company or an individual start to use their trademark with goods or services, become a trademark owner but the rights which deserve are limited. Therefore, those rights respond only to the specific geographic area where the goods or services are applies. When they wish a strong protecion and broader rights for their trademark, the best way is to apply to register that trademark.
University of Cyprus – Bachelor of Laws