7 March 2004
A trade mark (spelt trademark in the USA and in some international agreements) is a sign that identifies the supplier of goods or services. As such trade marks serves two functions First, they enable suppliers to create, develop and protect brands which often have considerable worth in themselves. Secondly, they guarantee the origin and in many cases the nature or quality of goods or services to consumers.
Legal Protection of Trade Marks
In most countries, trade marks are protected in a number of ways. First,
there are common law rules that forbid marketing of goods or services in
such a way as they are likely to be mistaken for those of another. In the
UK, Ireland and most other common law countries these rules are known as the
action of passing off or occasionally palming off and, in other countries,
as unfair competition. Secondly, most countries have a system of trade mark
registration. Registration of a sign with a national or supra-national trade
mark registry confers on the person registered as the proprietor of the
registration ("the registered proprietor") the exclusive right to use the
registered mark in respect of such goods or services as may be specified on
the register. Thirdly, the EC and many other countries protect geographical
appellations of wines, spirits, farm or other produce for which particular
regions have a reputation by special legislation. Finally, the criminal and
customs laws of most countries prohibit counterfeiting, intentional
misrepresentations of origin and cross-border traffic in bogus goods.
TRIPs
The
Agreement on
Trade-related Aspects of Intellectual Property Rights ("TRIPs")
imposes 4 sets of requirements upon members of the
World Trade
Organization ("WTO"). First,
art 15 (1) requires members to provide for the registration of signs capable
of constituting trade marks. The effect of registration should be to confer
upon registered proprietors exclusive rights to prevent all others from
using in the course of trade identical or similar signs for goods or
services which are identical or similar to those in respect of which the
mark is registered where such use would result in a likelihood of confusion
(art 16). The second set of obligations under art 22 is to provide the legal
means for interested parties to prevent the use of any means in the
designation or presentation of goods that indicates or suggests that such
goods originate in a geographical area other than the true place of origin
in a manner which misleads the public as to their geographical origin.
Members are also required to prevent unfair competition within the meaning
of art 10bis of Paris. Thirdly, art 2 of TRIPs requires WTO members
to comply with arts. 1 to 12 and 19 of Paris. These articles cover trade
names, trade marks and repression of unfair competition. Finally, art 61 of
TRIPs requires WTO members to provide for criminal procedures and penalties
to be applied in cases of wilful trade mark counterfeiting on a commercial
scale.
Legal Protection in the EC
The EC has adopted legislation to harmonize trade mark law between member states, establish a Community wide system of trade mark registration and protect geographical origins of food, drink and other produce. The First Trade Marks Directive (First Directive 89/104/EEC of the Council, of 21 December 1988, to approximate the Laws of the Member States relating to Trade Marks (OJ EC No L 40 of 11.2.1989, p. 1)) defines signs that may be registered as trade marks, establishes grounds for refusing registration, specifies the rights that may be granted by registration, provides for licensing and sets out the circumstances in which trade marks may be revoked or declared invalid. requires member states to harmonize their national trade marks law.
Community Trade Marks
The Community Trade Mark Regulation
(Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade
mark) created a Community trade mark ("the CTM"). It established
OHIM (the Office for
Harmonization in the Internal Market) as the registry for the CTM. The
regulation endows the CTM with a unitary character with equal effect
throughout the Community: In contrast to the European patent it may "not be
registered, transferred or surrendered or be the subject of a decision
revoking the rights of the proprietor or declaring it invalid, nor shall its
use be prohibited, save in respect of the whole Community." Rules for
processing applications, grant, revocation, invalidity and other
administrative matters are contained in the
Implementing Regulation
(Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing
Council Regulation (EC) No 40/94 on the Community trade mark).
Legal Protection in the UK
There are in the UK, as in other EC member states, two trade mark regimes, namely the CTM and national trade marks. National or British trade marks may be registered with the Trade Marks Registry of the Patent Office under the provisions of the Trade Marks Act 1994. The Act implements the First Trade Mark Directive and provides for the CTM and the Madrid Protocol (Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) which facilitates cross-border registration of trade marks from a single registration through the World Intellectual Property Organization.
Enforcement
Trade marks are enforced by civil proceedings. In
England and Wales infringement claims are brought in the Chancery Division
of the High Court of Justice. No county court yet has jurisdiction to
entertain a trade mark action under the 1994 Act. County courts had such
jurisdiction under the Trade Marks Act 1938 and the DTI has indicated in the
Innovation Report that trade marks jurisdiction will be restored to at least
the Patents County Court. The Patent Office may hear applications for
declaration of invalidity and revocation but not infringement claims. Claims
for infringement of a CTM have to be brought in a Community trade mark court
(that is to say a national court designated by a member state to hear CTM
claims). The High Court of Justice is the Community trade mark court for
England and Wales. Certain trade mark infringements are also offences under
the TMA itself or the Trade Descriptions Act 1968 or at common law. Criminal
penalties for some of those offences have recently been increased
substantially by the
Copyright, etc. and Trade Marks
(Offences and Enforcement) Act 2002.
Local authority trading standards officers prosecute such offences.
Important
