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A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign,
design A design is a plan or specification for the construction of an object or system or for the implementation of an activity or process or the result of that plan or specification in the form of a prototype, product, or process. The verb ''to design' ...
, or expression that identifies products or services from a particular source and distinguishes them from others. The trademark owner can be an individual,
business organization A business entity is an entity that is formed and administered as per corporate law in order to engage in business activities, charitable work, or other activities allowable. Most often, business entities are formed to sell a product or a servi ...
, or any legal entity. A trademark may be located on a package, a label, a
voucher A voucher is a bond of the redeemable transaction type which is worth a certain monetary value and which may be spent only for specific reasons or on specific goods. Examples include housing, travel, and food vouchers. The term voucher is als ...
, or on the product itself. Trademarks used to identify services are sometimes called service marks. The first
legislative A legislature is an assembly with the authority to make laws for a political entity such as a country or city. They are often contrasted with the executive and judicial powers of government. Laws enacted by legislatures are usually known ...
act concerning trademarks was passed in 1266 under the reign of Henry III of England, requiring all bakers to use a distinctive mark for the bread they sold. The first modern trademark laws emerged in the late 19th century. In
France France (), officially the French Republic ( ), is a country primarily located in Western Europe. It also comprises of Overseas France, overseas regions and territories in the Americas and the Atlantic Ocean, Atlantic, Pacific Ocean, Pac ...
, the first comprehensive trademark system in the world was passed into law in 1857. The
Trade Marks Act 1938 The Trade Marks Act 1994 is the law governing trade marks within the United Kingdom and the Isle of Man. It implements EU Directive No. 89/104/EEC (The Trade Marks Directive) which forms the framework for the trade mark laws of all EU member ...
of the
United Kingdom The United Kingdom of Great Britain and Northern Ireland, commonly known as the United Kingdom (UK) or Britain, is a country in Europe, off the north-western coast of the continental mainland. It comprises England, Scotland, Wales and ...
changed the system, permitting registration based on "intent-to-use", creating an examination based process, and creating an application publication system. The 1938 Act, which served as a model for similar legislation elsewhere, contained other novel concepts such as "associated trademarks", a consent to use the system, a defensive mark system, and a non claiming right system. The symbols (the
trademark symbol The trademark symbol is a symbol to indicate that the preceding mark is a trademark, specifically an unregistered trademark. It complements the registered trademark symbol which is reserved for trademarks registered with an appropriate g ...
) and (the registered trademark symbol) can be used to indicate trademarks; the latter is only for use by the owner of a trademark that has been registered.


Usage

A trademark identifies the brand owner of a particular product or service. Trademarks can be used by others under licensing agreements; for example,
Bullyland Bullyland AG is a German–based manufacturing company founded in 1973 and based in Spraitbach, known worldwide as a manufacturer of hand-painted collectors' models and figurines. Bullyland has offices in New York City and Hong Kong, its own pro ...
obtained a license to produce Smurf figurines; the Lego Group purchased a license from Lucasfilm to be allowed to launch
Lego Star Wars Lego ''Star Wars'' is a Lego theme that incorporates the '' Star Wars'' saga and franchise. Originally it was only licensed from 1999 to 2008, but The Lego Group extended the license with Lucasfilm, first until 2011, then until 2016, then a ...
;
TT Toys Toys TT Toys Toys SRL are an Italian manufacturer of children’s pedal and electric ride on cars. They have a factory near Milan and specialise in the manufacture of licensed replica cars for children. History Alberto Burratti, Luigi Vezzoli, Carlo Bo ...
is a manufacturer of licensed ride-on replica cars for children. The unauthorized usage of trademarks by producing and trading counterfeit consumer goods is known as
brand piracy Brand piracy is the act of naming a product in a manner which can result in confusion with other better known brands. According to author Robert Tönnis ''The term brand piracy is unauthorized usage of protected brand names, labels, designs or descr ...
. The owner of a trademark may pursue legal action against trademark infringement. Most countries require formal trademark registration as a precondition for pursuing this type of action. The United States, Canada, and other countries also recognize common law trademark rights, which means action can be taken to protect any unregistered trademark if it is in use. Still, common law trademarks offer to the holder, in general, less legal protection than registered trademarks.


Designation and symbols

A trademark may be designated by the following symbols: * (the "
trademark symbol The trademark symbol is a symbol to indicate that the preceding mark is a trademark, specifically an unregistered trademark. It complements the registered trademark symbol which is reserved for trademarks registered with an appropriate g ...
", which is the letters "TM" in superscript, for an
unregistered trademark An unregistered trademark or common law trademark is an enforceable mark created by a business or individual to signify or distinguish a product or service. It is legally different from a registered trademark granted by statute. As with registere ...
, a mark used to promote or brand goods) * (which is the letters "SM" in superscript, for an unregistered service mark, a mark used to promote or brand services) * (the letter "R" surrounded by a circle, for a registered trademark) The three symbols associated with trademarks represent the status of a mark and accordingly its level of protection. While can be used with any common law usage of a mark, may only be used by the owner of a mark following registration with the relevant national authority, such as the
U.S. Patent and Trademark Office The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alex ...
(USPTO or PTO) or Indian Patent Office (IPO). The proper manner to display either symbol is immediately following the mark in superscript style.


Styles

A trademark is typically a name, word, phrase, logo, symbol,
design A design is a plan or specification for the construction of an object or system or for the implementation of an activity or process or the result of that plan or specification in the form of a prototype, product, or process. The verb ''to design' ...
, image, or a combination of these elements.Restatement (Third) of Unfair Competition § 9 (1995) There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on colour, smell, or sound (like jingles). Trademarks that are considered offensive are often rejected according to a nation's trademark law. The term ''trademark'' is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used about services rather than products, it may sometimes be called a service mark, particularly in the
United States The United States of America (U.S.A. or USA), commonly known as the United States (U.S. or US) or America, is a country Continental United States, primarily located in North America. It consists of 50 U.S. state, states, a Washington, D.C., ...
.


Fundamental concepts

The essential function of a trademark is to exclusively identify the source or origin of products or services, so a trademark, properly called, indicates the source or serves as a badge of origin. In other words, trademarks serve to identify a particular entity as the source of goods or services. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark. Trademarks are used not only by businesses but also by noncommercial organizations and religions to protect their
identity Identity may refer to: * Identity document * Identity (philosophy) * Identity (social science) * Identity (mathematics) Arts and entertainment Film and television * ''Identity'' (1987 film), an Iranian film * ''Identity'' (2003 film), an ...
and goodwill associated with their name. Trademark rights generally arise out of the use of, or to maintain exclusive rights over, that sign about certain products or services, assuming there are no other trademark objections. Different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45
Trademark Classes A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others. ...
(1 to 34 cover goods, and 35 to 45 cover services). The idea behind this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world.


History

In trademark treatises it is usually reported that blacksmiths who made swords in the
Roman Empire The Roman Empire ( la, Imperium Romanum ; grc-gre, Βασιλεία τῶν Ῥωμαίων, Basileía tôn Rhōmaíōn) was the post-Roman Republic, Republican period of ancient Rome. As a polity, it included large territorial holdings aro ...
are thought of as being the first users of trademarks. Other notable trademarks that have been used for a long time include Stella Artois, which claims use of its mark since 1366, and Löwenbräu, which claims use of its lion mark since 1383. The first trademark legislation was passed by the Parliament of England under the reign of King Henry III in 1266, which required all bakers to use a distinctive mark for the bread they sold. The first modern trademark laws emerged in the late 19th century. In France, the first comprehensive trademark system in the world was passed into law in 1857 with the "Manufacture and Goods Mark Act". In Britain, the
Merchandise Marks Act 1862 Merchandising is any practice which contributes to the sale of products to a retail consumer. At a retail in-store level, merchandising refers to displaying products that are for sale in a creative way that entices customers to purchase more ...
made it a criminal offense to imitate another's trade mark 'with intent to defraud or to enable another to defraud'. In 1875, the Trade Marks Registration Act was passed which allowed formal registration of trademarks at the UK Patent Office for the first time. Registration was considered to comprise '' prima facie'' evidence of ownership of a trademark and registration of marks began on 1 January 1876. The 1875 Act defined a registrable trade mark as a device or mark, or name of an individual or firm printed in some particular and distinctive manner; or a written signature or copy of a written signature of an individual or firm; or a distinctive label or ticket'.Bently, Lionel, "The Making of Modern Trade Marks Law: The Construction of the Legal Concept of Trade Mark (1860-80)" in Lionel Bently, Jane C. Ginsburg & Jennifer Davis (eds), ''Trade Marks and Brands: An Interdisciplinary Critique'' (Cambridge University Press, 2008) In the
United States The United States of America (U.S.A. or USA), commonly known as the United States (U.S. or US) or America, is a country Continental United States, primarily located in North America. It consists of 50 U.S. state, states, a Washington, D.C., ...
,
Congress A congress is a formal meeting of the representatives of different countries, constituent states, organizations, trade unions, political parties, or other groups. The term originated in Late Middle English to denote an encounter (meeting of ...
first attempted to establish a federal trademark regime in 1870. This statute purported to be an exercise of Congress' Copyright Clause powers. However, the Supreme Court struck down the 1870 statute in the ''
Trade-Mark Cases The ''Trade-Mark Cases'', 100 U.S. 82 (1879), were a set of three cases consolidated into a single appeal before the United States Supreme Court, which in 1879 unanimously ruled that the Copyright Clause of the Constitution gave Congress no power ...
'' later on in the decade. In 1881, Congress passed a new trademark act, this time according to its Commerce Clause powers. Congress revised the Trademark Act in 1905. The Lanham Act of 1946 updated the law and has served, with several amendments, as the primary federal law on trademarks. The
Trade Marks Act 1938 The Trade Marks Act 1994 is the law governing trade marks within the United Kingdom and the Isle of Man. It implements EU Directive No. 89/104/EEC (The Trade Marks Directive) which forms the framework for the trade mark laws of all EU member ...
in the
United Kingdom The United Kingdom of Great Britain and Northern Ireland, commonly known as the United Kingdom (UK) or Britain, is a country in Europe, off the north-western coast of the continental mainland. It comprises England, Scotland, Wales and ...
set up the first registration system based on the "intent-to-use" principle. The Act also established an application publishing procedure and expanded the rights of the trademark holder to include the barring of trademark use even in cases where confusion remained unlikely. This Act served as a model for similar legislation elsewhere.


Oldest registered trademarks

The oldest registered trademark has various claimants, enumerated below: *
Australia Australia, officially the Commonwealth of Australia, is a sovereign country comprising the mainland of the Australian continent, the island of Tasmania, and numerous smaller islands. With an area of , Australia is the largest country by ...
: Most significant companies were already using trademarks in the mid-nineteenth century and while Australia based its patent law on the British law system, the then province of South Australia (1863), and colonies
Queensland ) , nickname = Sunshine State , image_map = Queensland in Australia.svg , map_caption = Location of Queensland in Australia , subdivision_type = Country , subdivision_name = Australia , established_title = Before federation , establishe ...
and Tasmania (1864), New South Wales (1895) Victoria (1876) and Western Australia (in 1885) had enacted laws to protect trademarks well before Britain did. Thus the Bank of New South Wales had registered its coat of arms in c.1850 and firms such as Tasmanian Jam and Preserved Fruit Co. had a trademark in 1878, when, after the Federation of Australia, the Commonwealth Trademarks Register was introduced on 2 July 1906 and the Trade Marks Office opened in Melbourne, on which date more than 750 applications were lodged. A product for treatment for coughs colds and bronchitis, PEPS, 'a wonderful breathing medicine in soluble tablet form', was the first of these federal trademarks, registered by Charles Edward Fulford; a rounded rectangle designed for the top of a tin. The shape contained the word 'PEPs' along with a descriptive blurb that read 'for coughs, colds & bronchitis.' *
United Kingdom The United Kingdom of Great Britain and Northern Ireland, commonly known as the United Kingdom (UK) or Britain, is a country in Europe, off the north-western coast of the continental mainland. It comprises England, Scotland, Wales and ...
: 1876 – The Bass Brewery's label incorporating its triangle logo for
ale Ale is a type of beer brewed using a warm fermentation method, resulting in a sweet, full-bodied and fruity taste. Historically, the term referred to a drink brewed without hops. As with most beers, ale typically has a bittering agent to bala ...
was the first trademark to be registered under the Trade Mark Registration Act 1875., United Kingdom Intellectual Property Office. *
United States The United States of America (U.S.A. or USA), commonly known as the United States (U.S. or US) or America, is a country Continental United States, primarily located in North America. It consists of 50 U.S. state, states, a Washington, D.C., ...
: there are at least two claims: ** A design mark with an eagle and a ribbon and the words "Economical, Beautiful, and Durable" was the first registered trademark, filed by the Averill Chemical Paint Company on 30 August 1870 under the Trademark Act of 1870. However, in the ''
Trade-Mark Cases The ''Trade-Mark Cases'', 100 U.S. 82 (1879), were a set of three cases consolidated into a single appeal before the United States Supreme Court, which in 1879 unanimously ruled that the Copyright Clause of the Constitution gave Congress no power ...
'', , the U.S. Supreme Court held the 1870 Act to be unconstitutional. ** The oldest U.S. registered trademark still in use is trademark reg. no 11210, a depiction of the Biblical figure Samson wrestling a lion, registered in the United States on 27 May 1884 by the J.P. Tolman Company (now Samson Rope Technologies, Inc.), a rope-making company. *
Germany Germany,, officially the Federal Republic of Germany, is a country in Central Europe. It is the second most populous country in Europe after Russia, and the most populous member state of the European Union. Germany is situated betwee ...
: 1875 – The Krupp steel company registered three seamless train wheel tires, which are put on top of each other, as its label in 1875, under the German Trade Mark Protection Law of 1874. The seamless train wheel tire did not break, unlike iron tires with seams, and was patented by Krupp in Prussia in 1853.


Terminology

Terms such as "mark", " brand" and " logo" are sometimes used interchangeably with "trademark". "Trademark", however, also includes any device, brand, label, name, signature, word, letter, numerical, shape of goods, packaging, color or combination of colors, smell, sound, movement or any combination thereof which is capable of distinguishing goods and services of one business from those of others. It must be capable of graphical representation and must be applied to goods or services for which it is registered. Specialized types of trademark include certification marks,
collective trademark A collective trademark, collective trade mark, or collective mark is a trademark owned by an organization (such as an association), used by its members to identify themselves with a level of quality or accuracy, geographical origin, or other charac ...
s and
defensive trademark Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of anoth ...
s. A trademark that is popularly used to describe a product or service (rather than to distinguish the product or services from those of third parties) is sometimes known as a genericized trademark. If such a mark becomes synonymous with that product or service to the extent that the trademark owner can no longer enforce its proprietary rights, the mark becomes generic. A " trademark look" is an informal term for a characteristic look for a performer or character of some sort. It is usually not legally trademark protected and the term is not used in the trademark law.


Registration

Some law considers a trademark to be a form of property.
Proprietary {{Short pages monitor A trademark is ''diluted'' when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (e.g., just the word Pepsi spoken, or on a billboard). Under trademark law, dilution occurs either when unauthorized use of a mark "blurs" the "distinctive nature of the mark" or "tarnishes it." Likelihood of confusion is not required. 15 U.S.C §§ 1127, 1125(c).


Sale, transfer and licensing

In various jurisdictions, a trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. However, this is not the case in the United States, where the courts have held that this would "be a fraud upon the public". In the U.S., trademark registration can therefore only be sold and assigned if accompanied by the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark or the sale of the corporation (or subsidiary) that produces the trademarked goods.


Licensing

Licensing means the trademark owner (the licensor) grants a permit to a third party (the licensee) to commercially use the trademark legally. It is a contract between the two, containing the scope of content and policy. The essential provisions to a trademark license identify the trademark owner and the licensee, in addition to the policy and the goods or services agreed to be licensed. Most jurisdictions provide for the use of trademarks to be licensed to third parties. The licensor must monitor the quality of the goods being produced by the licensee to avoid the risk of the trademark being deemed abandoned by the courts. A trademark license should therefore include appropriate provisions dealing with quality control, whereby the licensee provides warranties as to the quality and the licensor has rights to inspection and monitoring.


Domain names

The advent of the
domain name system The Domain Name System (DNS) is a hierarchical and distributed naming system for computers, services, and other resources in the Internet or other Internet Protocol (IP) networks. It associates various information with domain names assigned t ...
has led to attempts by trademark holders to enforce their rights over domain names that are similar or identical to their existing trademarks, particularly by seeking control over the domain names at issue. As with dilution protection, enforcing trademark rights over domain name owners involves protecting a trademark outside the obvious context of its consumer market, because domain names are global and not limited by goods or service. This conflict is easily resolved when the domain name owner actually uses the domain to compete with the trademark owner. Cybersquatting, however, does not involve competition. Instead, an unlicensed user registers a domain name identical to a trademark and offers to sell the domain to the trademark owner. Typosquatters—those registering common misspellings of trademarks as domain names—have also been targeted successfully in trademark infringement suits. " Gripe sites", on the other hand, tend to be protected as free speech, and are therefore more difficult to attack as trademark infringement. This clash of the new technology with preexisting trademark rights resulted in several high-profile decisions as the courts of many countries tried to coherently address the issue (and not always successfully) within the framework of existing trademark law. As the website itself was not the product being purchased, there was no actual consumer confusion, and so
initial interest confusion Initial interest confusion is a legal doctrine under trademark law that permits a finding of infringement when there is temporary confusion that is dispelled before the purchase is made. Generally, trademark infringement is based on the likelihood ...
was a concept applied instead. Initial interest confusion refers to customer confusion that creates an initial interest in a competitor's "product" (in the online context, another party's website). Even though initial interest confusion is dispelled by the time any actual sales occur, it allows a trademark infringer to capitalize on the goodwill associated with the original mark. Several cases have wrestled with the concept of initial interest confusion. In '' Brookfield Communications, Inc. v. West Coast Entertainment Corp.'' the court found initial interest confusion could occur when a competitor's trademarked terms were used in the
HTML The HyperText Markup Language or HTML is the standard markup language for documents designed to be displayed in a web browser. It can be assisted by technologies such as Cascading Style Sheets (CSS) and scripting languages such as JavaS ...
metatags of a website, resulting in that site appearing in the search results when a user searches on the trademarked term. In '' Playboy v. Netscape'', the court found initial interest confusion when users typed in Playboy's trademarks into a search engine, resulting in the display of search results alongside unlabeled banner ads, triggered by keywords that included Playboy's marks, that would take users to Playboy's competitors. Though users might ultimately realize upon clicking on the banner ads that they were not Playboy-affiliated, the court found that the competitor advertisers could have gained customers by appropriating Playboy's goodwill since users may be perfectly happy to browse the competitor's site instead of returning to the search results to find the Playboy sites. In '' Lamparello v. Falwell'', however, the court clarified that a finding of initial interest confusion is contingent on financial profit from said confusion, such that, if a domain name confusingly similar to a registered trademark is used for a non-trademark related website, the site owner will not be found to have infringed where they do not seek to capitalize on the mark's goodwill for their own commercial enterprises. Also, courts have upheld the rights of trademark owners about the commercial use of domain names, even in cases where goods sold there legitimately bear the mark. In the landmark decision ''Creative Gifts, Inc. v. UFO'', 235 F.3d 540 (10th Cor. 2000) (New Mexico), defendants had registered the domain name "Levitron.com" to sell goods bearing the trademark "Levitron" under an at-will license from the trademark owner. The 10th Circuit affirmed the rights of the trademark owner about the said domain name, despite arguments of
promissory estoppel A promise is a commitment by someone to do or not do something. As a noun ''promise'' means a declaration assuring that one will or will not do something. As a verb it means to commit oneself by a promise to do or give. It can also mean a capacity ...
. Most courts particularly frowned on cybersquatting and found that it was itself a sufficiently commercial use (i.e., "trafficking" in trademarks) to reach into the area of trademark infringement. Most jurisdictions have since amended their trademark laws to address domain names specifically and to provide explicit remedies against cybersquatters. In the US, the legal situation was clarified by the Anticybersquatting Consumer Protection Act, an amendment to the Lanham Act, which explicitly prohibited cybersquatting. It defines cybersquatting as "(occurring) when a person other than the trademark holder registers the domain name of a well-known trademark and then attempts to profit from this by either ransoming the domain name back to the trademark holder or using the domain name to divert business from the trademark holder to the domain name holder". The provision states that " person shall be liable in a civil action by the owner of the mark ... if, without regard to the goods or services of the person, that person (i) had a bad faith intent to profit from the mark ...; and registers, traffics in, or uses domain name
hat is confusingly similar to another's a mark or dilutes another's marked A hat is a head covering which is worn for various reasons, including protection against weather conditions, ceremonial reasons such as university graduation, religious reasons, safety, or as a fashion accessory. Hats which incorporate mecha ...
. This international legal change has also led to the creation of ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP) and other dispute policies for specific countries (such as
Nominet UK Nominet UK is currently delegated by IANA to be the manager of the .uk domain name. Nominet directly manages registrations directly under .uk, and some of the second level domains .co.uk, .org.uk, .sch.uk, .me.uk, .net.uk, .ltd.uk and .plc.uk. ...
's DRS) which attempt to streamline the process of resolving who should own a domain name (without dealing with other infringement issues such as damages). This is particularly desirable to trademark owners when the domain name registrant may be in another country or even anonymous. Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trademarks for perceived advantages, such as an extra bulwark against their domain being hijacked, and to avail themselves of such remedies as ''confusion'' or
passing off Passing off is a common law tort which can be used to enforce unregistered trade mark rights. The tort of passing off protects the goodwill of a trader from misrepresentation. The law of passing off prevents one trader from misrepresenting ...
against other domain holders with confusingly similar or intentionally misspelled domain names. As with other trademarks, the domain name will not be subject to trademark registration unless the proposed mark is actually used to identify the registrant's goods or services to the public, rather than simply being the location on the Internet where the applicant's web site appears. Amazon is a prime example of a protected trademark for a domain name central to the public's identification of the company and its products. Terms that are not protectable by themselves, such as a generic term or a merely descriptive term that has not acquired secondary meaning, may become registerable when a Top-Level Domain Name (e.g. dot-COM) is appended to it. An example of such a domain name ineligible for trademark or service mark protection as a generic term, but which currently has a registered U.S. service mark, is "HEARSAY.COM". Among trademark practitioners there remains a great deal of debate around trademark protection under ICANN's proposed generic top-level domain name space expansion.
World Trademark Review ''World Trademark Review'' is a website and magazine covering the commercial and international practice of trademark law. Subscribers receive a print magazine once every other month and a daily email newsletter featuring news stories, feature art ...
has been reporting on the at times fiery discussion between trademark owners and domainers.


Security

Trademark owners and applications enjoy many protections. The IPR (Intellectual Property Rights) Center for example has the message of "protection is our trademark" and is one example of an office that will enforce and protect the marks when needed.


International law

Although there are systems that facilitate the filing, registration, or enforcement of trademark rights in more than one jurisdiction on a regional or global basis, it is currently not possible to file and obtain a single trademark registration that will automatically apply around the world. Like any national law, trademark laws apply only in their applicable country or jurisdiction, a quality which is sometimes known as "territoriality".


Territorial application

The inherent limitations of the territorial application of trademark laws have been mitigated by various intellectual property treaties, foremost amongst which is the WTO
Agreement on Trade-Related Aspects of Intellectual Property Rights The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an international legal agreement between all the member nations of the World Trade Organization (WTO). It establishes minimum standards for the regulation by na ...
(TRIPS). TRIPS establishes legal compatibility between member jurisdictions by requiring the harmonization of applicable laws. For example, Article 15(1) of TRIPS defines "sign" which is used as or forms part of the definition of "trademark" in the trademark legislation of many jurisdictions around the world.


Madrid system

The major international system for facilitating the registration of trademarks in multiple jurisdictions is commonly known as the "Madrid system ". Madrid provides a centrally administered system for securing trademark registrations in member jurisdictions by extending the protection of an "international registration" obtained through the World Intellectual Property Organization. This international registration is in turn based upon an application or registration obtained by a trademark applicant in its home jurisdiction. The primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in many jurisdictions by filing one application in one jurisdiction with one set of fees, and make any changes (e.g. changes of name or address), and renew registration across all applicable jurisdictions through a single administrative process. Furthermore, the "coverage" of the international registration may be extended to additional member jurisdictions at any time.


Trademark Law Treaty

The Trademark Law Treaty establishes a system under which member jurisdictions agree to standardize procedural aspects of the trademark registration process. It is not necessarily respective of rules within individual countries.


Community Trademark system

The EU Trade Mark (EUTM) system (formerly the Community Trademark system) is the trademark system which applies in the
European Union The European Union (EU) is a supranational union, supranational political union, political and economic union of Member state of the European Union, member states that are located primarily in Europe, Europe. The union has a total area of ...
, whereby registration of a trademark with the
European Union Intellectual Property Office The European Union Intellectual Property Office (EUIPO; french: links=no, Office de l'Union européenne pour la propriété intellectuelle), founded in 1994, is the European Union Agency responsible for the registration of the European Union trad ...
(EUIPO, formerly Office for Harmonization in the Internal Market (Trade Marks and Designs)), leads to a registration which is effective throughout the EU as a whole. The EUTM system is therefore said to be unitary in character, in that a EUTM registration applies indivisibly across all European Union member states. However, the CTM system did not replace the national trademark registration systems; the CTM system and the national systems continue to operate in parallel to each other (see also European Union trade mark law). Persons residing outside the EU must have a professional representative to the procedures before EUIPO, while representation is recommended for EU residents. One of the tasks of a EUTM owner is the monitoring of the later applications whether any of those is similar to his/her earlier trademark. Monitoring is not easy and usually requires professional expertise. To conduct a monitoring there is the so-called Trademark Watching service where it can be checked if someone tries to get registered marks that are similar to the existing marks.
Oppositions ''Oppositions'' was an architectural journal produced by the Institute for Architecture and Urban Studies from 1973 to 1984. Many of its articles contributed to advancing architectural theory and many of its contributors became distinguished practi ...
should be filed on the standard opposition form in any official language of the European Union, however, the substantive part of the opposition (e.g. the argumentations) can be submitted only in the language of the opposed application, that is one of the working languages of the EUIPO, e.g. English, Spanish, German.


Well-known status

Well-known trademark status is commonly granted to famous international trade marks in less-developed legal jurisdictions. Under Article 6 ''bis'' of the Paris Convention, countries are empowered to grant this status to marks that the relevant authority considers are 'well known'. In addition to the standard grounds for trademark infringement (same/similar mark applied same/similar goods or services, and a likelihood of confusion), if the mark is deemed well known it is an infringement to apply the same or a similar mark to dissimilar goods/services where there is confusion, including where it takes unfair advantage of the well-known mark or causing detriment to it. A well-known trademark does not have to be registered in the jurisdiction to bring a trademark infringement action (equivalent to bringing a
passing off Passing off is a common law tort which can be used to enforce unregistered trade mark rights. The tort of passing off protects the goodwill of a trader from misrepresentation. The law of passing off prevents one trader from misrepresenting ...
claim without having to show goodwill and having a lesser burden of proof). As per the Trademark Rules 2017, India, an applicant needs to substantiate his claim that his trademark is having the "well-known" status. He needs to furnish the documents in support of evidence of his rights & claims, namely use of trademark, any application for trademark, and annual sales turnover, and so on.


Protection of well-known marks

Many countries protect unregistered well-known marks following their international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). Consequently, not only big companies but also SMEs may have a good chance of establishing enough goodwill with customers so that their marks may be recognized as well-known marks and acquire protection without registration. It is, nevertheless, advisable to seek registration, taking into account that many countries provide for extended protection of registered well-known marks against dilution (Art. 16.3 TRIPS),[Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark about those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use] i.e., the reputation of the mark being weakened by the unauthorized use of that mark by others.WIPO
/ref> Several trademark laws merely implement obligations under Article 16.3 of the TRIPS Agreement and protect well-known registered trademarks only under the following conditions: 1- that the goods and services for which the other mark is used or is seeking protection are not identical with or similar to the goods for which the well-known mark acquired its reputation 2- that the use of the other mark would indicate a connection between these goods and the owner of the well-known mark, and 3 – that their interests are likely to be damaged by such use.


References


External links


"Quick Facts"
by the
Intellectual Property Office (United Kingdom) The Intellectual Property Office of the United Kingdom (often referred to as the UK IPO) is, since 2 April 2007, the operating name of The Patent Office. It is the official government body responsible for intellectual property rights in the UK ...

Trademark Fact Sheets
by the International Trademark Association
Trade Marks: The information brochure on trademark protection
by the German Patent and Trade Mark Office (GPTO)
Patent and Trademark Information
from ''UCB Libraries GovPubs''

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