info 442 chapter6

INFO 442: INFORMATION POLICY AND INTELLECTUAL

PROPERTY

Senait.s

(Bsc,Msc)

04/10/23 1

Chapter six: Trade Marks

• Basic Trade Mark Law • Trade Mark Acts • Use of Others' Trademarks• Use of Others' Trademarks as a Fan• Use of Others' Trademarks as a Critic • Trade Secrets or Confidential Information

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Basic Trade Mark Law

• What is a Trade Mark?• Different Laws defined trade mark in different ways, albeit

similarities in the purpose it is meant to achieve.• The world Trade Organization (WTO) defines it as: Any sign

or any combination of signs capable of distinguishing the goods or services of one undertaking from other; undertaking shall be capable of constituting a trade mark. Such sign, in particular words including personal names, letters, numbers, figurative elements and combination of such signs shall be eligible for registration as trade mark.

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Basic Trade Mark Law cont”

• British trade act of 1994 defines trade mark as: Any sign capable of being represented graphically and which is capable of distinguishing goods or services of one undertaking from those of others.

• A trade mark may, in particular consist of words including personal names design, letters, numeral, or the shape of goods or their packaging.

• The Ethiopia proclamation No 501/2006 for trade mark registration and protection under article 2 (12) defines trade mark as:

• Any visible sign capable of distinguishing goods or services of one person from those of other persons.

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• It includes design, letters, numerals, colours, or shapes of goods or their packaging or the combination there of.

• The emphasis of definitions are on sign and different forms and secondly, must be capable of distinguishing one company's products and services from all other similar products and services of another company.

• But seems to exclude sounds as a distinguishing factor among one another company.

• However, for purposes of our lecture, Trade mark means any word, symbol, design, device logo or slogan that identifies and distinguishes one product or service from another.

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• Used or proposed to be used in relation to goods and some person having, the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person in relation to a certification trade mark. It is a mark registered or deemed to have been registered as a certification trade mark.

• This definition is of fundamental importance in setting the limits of the trade mark registration system. It requires a connection in the course of trade between the proprietor and goods and that the use is in relation to goods.

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Basic Trade Mark Law cont’

• Trade marks serve three important purposes; they are to:• i. identify the origin of the product;• ii. provide an assurance of quality; and • iii. create consumer loyalty (known as good will).• Although, the rationale for the trade mark is as mentioned

above, in the Legal systems point of view as to afford protections to businesses' trade mark and there by the hard won good will.

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Basic Trade Mark Law • There are justifications for the protection of trade marks.1. Marks are very valuable for intellectual property because

they become associated with quality and consumer expectation in a product or service.

Some goods become almost synonymous with their (trade mark) Eg…the soft drink coca-cola coupled with intensive advertising company, the utility of marks to their owners as marking weapons is plain to see and trade mark right usually will be vigorously asserted and defended.

2. Economic value of symbolism in marking. E.g the value of the coca-cola trade mark must be immerse when one considers the size of worldwide sales in what could be deserted as a beverage based on a formula for exceptional syrup. 04/10/23 8

Basic Trade Mark Law cont”• Symbolism here is also reinforced by the shape of the coca-

cola bottle, which was designed to prevent the dissipation of the company image resulting from the variety bottle made.

• Trade marks can be seen as serving two purposes: – to protect business reputation and goodwill and, – secondly, to protect consumers from deception, that is to prevent

the buying public purchasing inferior goods or services in the mistaken belief that they originate from or are provided by another trade.

• As a form of consumer protection this area of law has been an effective weapon against counterfeit and inferior goods.

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Basic Trade Mark Law cont” • However, as far as the control of the use of mark in the civil

courts is concerned, the action lies with the proprietor the mark and consumers are protected indirectly through the self interest of those with property rights in trade marks.

• The trademark may appear not only on the goods themselves but also on the container or wrapper in which the goods are sold.

• When used in connection with the marketing of the goods the sign may appear in advertisements, Eg, in newspapers or on television, or in the windows of the shops in which the goods are sold.

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• In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist.

• Collective marks are owned by an association, such as an association representing accountants or engineers, whose members use the mark to identify themselves with a level of quality and other requirements set by the association.

• Certification marks, such as the Wool mark, are given for compliance with defined standards, but are not confined to any membership.

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• A trademark used in connection with services is called a service mark. Service marks are used Eg, by hotels, restaurants, airlines, tourist agencies, car-rental agencies, laundries and cleaners.

• All that has been said about trademarks applies also to service marks.

• Broadly speaking, a trademark performs the following four main functions.

• These relate to the distinguishing of marked goods or services, their commercial origin, their quality and their promotion in the market place:04/10/23 12


1. To distinguish the products or services of one enterprise from those of other enterprises.

• Trademarks facilitate the choice to be made by the consumer when buying certain products or using certain services.

• The trademark helps the consumer to identify a product or service which was already known to him or which was advertised.

• The distinctive character of a mark has to be evaluated in relation to the goods or services to which the mark is applied. 13

Basic Trade Mark Law cont” • Eg, the word "apple" or the image of an apple cannot

distinguish apples, but it is distinctive for computers. Trademarks do not only distinguish products or services as such, they distinguish them in their relationship to an enterprise from which the products or services originate.

2. To refer to a particular enterprise, not necessarily known to the consumer, which offers the products or services on the market. Thus trademarks distinguish products or services from one source, from identical or similar products or services from other sources. This function is important in defining the scope of protection of trademarks.

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3. To refer to a particular quality of the product or service for which it is used, so that consumers can rely on the consistent quality of the goods offered under a mark.

• This function is commonly referred to as the guarantee function of trademarks.

• A trademark is not always used by only one enterprise, since the trademark owner may grant licenses to use the trademark to other enterprises.

• It is accordingly essential that licensees respect the quality standards of the trademark owner. 04/10/23 15


• Moreover, trading enterprises often use trademarks for products that they acquire from various sources.

• In such cases, the trademark owner is not responsible for producing the products but rather (and this may be equally important) for selecting those that meet his quality standards and requirements.

• This argument is supported by the fact that even where the trademark owner is the manufacturer of a particular product, he may frequently use parts which have not been produced by him, but which have been selected by him.

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4. To promote the marketing and sale of products, and the marketing and rendering of services.

• Trademarks are not only used to distinguish or to refer to a particular enterprise or a particular quality, but also to stimulate sales.

• A trademark that is to fulfill that function must be carefully selected. It must appeal to the consumer, create interest and inspire a feeling of confidence.

• That is why this function sometimes is called the appeal function.

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Basic Trade Mark Law cont”• Thus, the disjunction between a trade mark and

a property mark is that where as the former denotes the manufacture or quality of the goods to which it is attached, the later denotes the ownership in them in other words, a trade mark concerns the goods themselves while a property mark concerns the proprietor.

• A property mark attached to the movable property of a person remains even if part of such property goes out of his hands and ceases to be his.

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Trade Mark Acts

Scope of Trade Mark Act: • The Act has codified the law relating to Trade and

merchandise marks and is a comprehensive piece of legislation dealing with the registration and protection of trade marks and criminal offences relating to trade marks and other markings in the merchandise.

• Under the Act registration of trade marks is not compulsory and as regards unregistered trade marks, some aspects are governed by the Act while others are still based on common law.

• The Act also makes provisions where under registered proprietor of a trade mark can permit any person to use the mark as a registered user.

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Trade Mark Acts cont”

• The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks.

• Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.

• Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office.

• Trademark laws allow businesses to protect the symbolic information that relates to their goods and services, by preventing the use of such information by competitors.04/10/23 20


• To receive trademark protection, a mark must be distinctive.

• Distinctive generally applies to any coined or fanciful word or term that does not closely resemble an existing mark.

• No mark will receive trademark protection if it is a common or descriptive term used in the marketplace.

• To receive trademark protection, a mark must be used in the marketplace.

• If two or more marketers claim ownership of a certain mark, the first user of the mark will usually receive the protection. 04/10/23 21


• However, if the mark is known only in a limited geographic area, it may not receive protection in areas where it is unknown to consumers.

• Infringement occurs if a mark is likely to cause confusion among consumers.

• In determining whether confusion is likely, the court examines a number of factors; including the similarity between the two marks in

appearance, sound, connotation, and impression; the similarity of the goods or services that the respective

marks represent; the similarity of the markets;

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whether the sale of the goods or services is inspired by impulse or only after careful consideration by the buyer;

the level of public awareness of the mark; whether shoppers are actually confused;

the number and nature of similar marks on similar goods or services;

the length of time of concurrent use without actual confusion on the part of shoppers; and

the variety of goods or services that the mark represents.

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• Defenses to infringement include fair use and collateral use.

• Fair use occurs when the second user, or repossessor, uses a protected mark in a nonconspicuous way to identify a component of a goods or service.

• For example, a restaurant can use a protected mark to advertise that it serves a particular brand of soft drink without infringing the mark.

• The restaurant cannot, however, identify itself by the mark without infringing the mark.

• Collateral use is use of the same mark in a different market. 04/10/23 24


Eg, assume that a tree surgeon has received trademark protection for the mark Tree Huggers.

• This protection may not prevent a business that sells logging boots from obtaining the same mark.

• However, if the mark for the boots is written or otherwise appears with the same defining characteristics as the mark for the tree surgeon, it risks being denied trademark protection, depending on whether it can be confused by consumers.

• Remedies for infringement of a protected trademark consist of damages for the profits lost owing to the infringement, recovery of the profits realized by the infringer owing to the infringement, and attorneys' fees. 04/10/23 25


• A trademark holder may also obtain injunctive relief to prevent infringement.

• The owner of a registered trademark has an exclusive right in respect of his mark.

• It gives him the right to use the mark and to prevent unauthorized third parties from using the mark, or a confusingly similar mark, so as to prevent consumers and the public in general from being misled.

• The period of protection varies, but a trademark can be renewed indefinitely on payment of corresponding fees.04/10/23 26


• Trademark protection is enforced by the courts, which in most systems have the authority to block trademark infringement.

• The registration covers the Trade Names and Geographical Indications.

• For the trade names, it is a category of industrial property, which covers commercial names and designations.

• A commercial or trade name is the name or designation that identifies an enterprise.

• In most countries, trade names may be registered with a government authority. 04/10/23 27

Trade Mark Acts cont”• However, under Article 8 of the Paris Convention for the

Protection of Industrial Property a trade name must be protected without the obligation of filing or registration, whether or not it forms part of a trademark.

• Protection generally means that the trade name of one enterprise may not be used by another enterprise either as a trade name or as a trade or service mark; and that a name or designation similar to the trade name, if likely to mislead the public, may not be used by another enterprise.

• In the case of a geographical indication, it is a sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin.

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Use of Others' Trademarks

• Although there is a nominative fair use defense usually protecting certain uses of another's mark, it is basically not a good idea to use another's trademark without permission.

• Recently Ticketmaster Group Inc. filed suit against Microsoft, whose "Seattle Sidewalk" web site contained links allowing users to bypass Ticketmaster's home page.

• Ticketmaster disapproved because they receive advertising revenue for advertisements on the home page; the bypassing reduced the value of the home page advertisements.04/10/23 29

Use of Others' Trademarks as a Fan

A fan is a lover of a particular product. For example a Liverpool football fan.

The problem: a fan for your company or product is so enthused that the fan creates a web site to pay tribute, but inevitably there appears on the site your intellectual property, perhaps your trademark (or some copyrighted material).

The down side is, if you do not take some action to protect your trademark(s) (and copyrights), you could lose this property, but who wants to alienate (and perhaps lose) dedicated enthusiastic fans?

This is especially true on the internet where the alienation could very quickly spread.

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Use of Others' Trademarks as a Fan

• While there are certainly sufficient legal weapons to stop trademark (and copyright) infringement, perhaps approaches are possible which will eliminate the infringement without alienating the infringer.

• For example, one could create a library of files with materials which are licensed free of charge with appropriate restrictions and removal rights. In cases where some action is necessary a gentle method may be the most effective.

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Use of Others' Trademarks as a Critic

• A critic is a situation where one compares products for quality identification.

• You may find at some internet sites the use of a trademark in connection with critiques of products or services associated with the marks.

• Generally this is not an infringement because it is not in connection with the sale of goods and because it does not cause confusion as to the source of the goods and services.

• Such a critique site may have other legal problems (defamation for example), but usually not trademark infringement.04/10/23 32

Trade Secrets or Confidential Information

• Trade secrets or confidential information refer to the exclusive and valuable information kept and managed by an organization without being discovered or disclosed.

• This is generally referred to as a formula, pattern, compilation, program, device, method, technique or process that is used in one's business, and has independent economic value that provides an advantage over competitors who are not aware of it or use it.

• Under most circumstances, a trade secret is lost once it is independently discovered.

• A trade secret law is conferred on those businesses who manage to keep valuable information to themselves the competitive advantage of exclusive access to that information. 04/10/23 33


• It is arguably tort law, rather than property law, but since the subject matter of the secret is often identical to the subject matter of the patent or copyright, its designation or classification in the United States is under the intellectual property rights.

• Protecting trade secret information can be particularly important when the internet is involved for at least two reasons:

1. The internet provides a communications path which people can use to obtain proprietary information; and

2. Proprietary information accessible over an internet connection can be copied in large quantities very quickly. 04/10/23 34


• For employees, customers, suppliers, and others who may access organizational data, sufficient steps must be taken to restrict access only to data needed by specific individuals or groups. Whenever possible, confidentiality and nondisclosure agreements should be executed.

• Non-competition agreements can also be effective whenever and wherever allowed by law.

• These protections are especially important for those companies who utilize intranets and extranets.

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