Trademark Glossary

Absolute obstacles – Not every sign can be registered as a trademark. At an international level there are several criteria that always lead a trademark registration to be refused. It is enough only the sole existence of one of them. They are :

  1. the sign applied for lacked distinctiveness (eg. too generic, too descriptive and suggestive terms )
  2. descriptive terms that must be kept free for general use (eg. “sweet” for confectionary products)
  3. liability of misleading the public (eg. adopting “royal ” term for marketing dinner sets)
    containing state emblems ( including country’s coulors or coat of arms ) or
  4. the trademark is contrary to public policy or the accepted principles of morality (profane or vulgar manner, trademarks relating to sexuality and innuendos, racial slurs, illegal activity)

Anyone can oppose an application on absolute grounds.

Acquired distinctiveness – Exception, that allows mark that did not have enough distinctive character to serve as a trademark. The owner shall demonstrate that the general public perceive the mark at issue as an indicator of origin (eg. Rolls – Royce, Ferrari, Mercedes, Lufthansa, Camel etc.).

Applicant – A person who applies for trademark protection, in essence, could be any natural or legal person or a partnership provided that has capacity to acquire rights and enter into liabilities.

Application date – The date when the complete request for trade mark protection is sent to the GPMA for assessment. The application date is crucial for defining the priority of a trademark application.

Cancellation – This proceeding occurs after the mark is registered. There are basically, two types of cancellation. The first one is cancellation due to nullity which comprises the absolute grounds for refusal and the second due to request for revocation which generally means that the trademark has not been put to use a certain period of time, or moreover, when the proprietor abandoned his trademark.

Collective mark – A mark which is represented by members of a certain group, an association, or other collective organization, to identify their goods or services by using the same name for their products. Often used to promote products that have characteristics of a given region or to indicate some membership and promoting the interests of the members.

Certification marks – A mark that identifies goods and/or services that meet certain established standards or specifications like: quality, accuracy, place of origin, materials, mode of manufacture of goods or performance of services etc. Anyone who complies with the standards can apply for a certification mark. Their function is not to indicate the origin but to certify that goods or services in relation to which it is applied have the required characteristics.

Commercial designations – Signs used in the course of trade as a name, company name or special designation of a business operation or an enterprise.(eg ‘Company Name’ LLC). Business names also enjoy trademark protection and the trademark rules are applicable to them.

Descriptive – Descriptive is a trademark that consists only of a sign that is, in no way, different from the normal characteristic of the products for which is used. (eg. sweet for confectionary products, Sushi for Japanese food). Non – descriptiveness is a necessary precondition for registering trade marks.

Distinctiveness – Distinctive is the trademark which, by any means, identifies the origin of the goods and services. The core principle is the consumers to be associated with the trademark sign and thus to enable the ones who acquired them to repeat the experience, if it proves to be positive, or to avoid it if it proves to be negative. Distinctiveness is core criteria and also one of the absolute obstacles for registration.

Dilution – Dilution is a legal concept that concerns only the well known marks. It is established in their favour due to their long lasting use and their reputation in the trade. This concept enables the proprietor of a mark to bring actions against users of a similar mark even if the opponent’s goods or services are not related to the ones of the famous mark. The idea behind is that the mark will be harmed by blurring and tarnishment by causing association to a similar mark and therefore the mark will lose its capacity to signify a certain source. Dilution is therefore different from trademark infringement because the latter involves a certain degree of customer confusion, whereas for the concept dilution, the sole existence of confusion is not prerequisite.

EUIPO – European Union Intellectual Property Office known as OHIM until 23 March 2016, is headquartered in Alicante, Spain. The core focus is to manage and promote Community Trademarks and Community Designs within the European Union and aims at harmonizing the trademark registration practices. The registered mark was known before as Community trade mark and as of March is European Union Trademark (EUTM).

European Union Trademark (EUTM) –  known before as Community trade mark are trademarks that have been afforded special protection at EU level and their validity is in all 28 Member states. Administered by EUIPO.

Examination – The process in which the examiners in the GPTO and all following hierarchical instances review the trade mark application with regards to its essential characteristics and prerequisites required by the law and decide whether to reject or to grant protection for a trademark.

Exclusive right – After the grant of the trademark protection the owner have an exclusive right to use the mark without exception. Primarily, after the registration at the DPMA, the owner has the right to exclude others from using in the commerce, to a certain extent confusingly similar trademark. The exclusive right is closely in line with the application date and the priority principle.

Figurative mark – Trademarks that consists generally of a figure or a figure combined with word. The emphasis is put on the visual part of the trademark. In this category is also a mark designed with a particular font or similar specifications. ( eg. MAc OEs )

Generic term – Any word or an expression which solely describes the product which is widely used in commerce even without regard to any specific product. Generic terms are not and can never be trademarks.

Genericness: The case when a trademark has become quite common descriptive name of an product or services. In that situation the trademark does perform the functions that justified its registration as an indicator of an origin, but becomes a standard word to describe products of that kind. The legal standard is: What do the buyers understand by the word for whose use the goods are marketed? Some marks that have become generic are: Aspirin, Escalator, Sellotape.

GPTO (German Patent and Trademark Office) – Central authority in the field of industrial property protection in Germany. This is first instance for protecting trade mark on a national level and is in charge for registration and later administration of the registered trade marks. Located in Munich, Berlin and Jena.

Indications of geographical origin – Signs which indicate the exact location from which the goods originate and moreover, possess qualities and reputation closely linked to that region (eg. Tequila, Champagne etc.) They are mainly used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and other industrial products.

Likelihood of confusion – This is a standard that is crucial in determining trademark infringement. Marks used by unrelated parties are similar if, by their use on the same, for same or related goods or services, the relevant consumer would think the goods or services come from the same source or economically linked undertaking. Likelihood of confusion is assessed for the signs at issue and for the good and services as well. In this perspective, there are several evaluation criteria which are the relative strengths of the marks, the duration and extent of each party’s use in commerce, the goods or services on which the marks are used (or for which they are registered), the market in which they are sold, the sophistication of the consumers in that market and how carefully they may consider a purchase of those goods or services. (eg, the marks sound alike when spoken, are visually very similar, or create the same general commercial impression, target the same consumers)

Madrid system – Centralized system with the aim to facilitate the protection of a trademark (registering and managing) in a large number of countries. This system provides flexible mechanism to obtain trademark protection with only a single application in multiple countries and it enables an effective and efficient way to ensure protection. A mark may be subject of an international application only if it has already been registered at the trademark office where the party has domicile. The Madrid system is administered by WIPO.

National trademark – Every country has its own trademark register and its own legislation. National registration is the application for protection directly in the country, for every applicant that operates within a certain geographical area. In Germany this administrative Organ for national trademarks is GPTO. All the applications before registering at EUIPO and WIPO have to be submitted to the corresponding National Office.

Nice classification – International Classification established under the Nice Agreement that serves to classify goods or services for the purposes of registration of marks. It is a necessary requirement for obtaining registration, that any applicant include in the files the classes to which the goods and services belong. The Nice classification consists of broad list of classes for goods and services and explanatory notes thereto, in alphabetical order from which 34 for goods and 11 for services.

Opposition – Legal procedure that have the same effect as veto with the idea to block a published mark from being registered. The time period is 3 months which begins after the trademark is advertised in the Official Journal. In essence, the opposition could be based on the twofold obstacles for registration: absolute and relative grounds. As a rule the opposition is generally filed by the virtue of the mark’s identity and likelihood of confusion.

Priority – First to file principle, the earlier in time, the stronger in law. In trademark law the one who filed earlier for registration has priority rights to use the mark filed for. This principle is closely related to the application date. In case of trademark rights between conflicting applications the first filed mark, has priority rights to use the sign applied for and therefore could exclude others for using similar signs. Generally, the earlier in time prevails.

Registered v.s unregistered trademark – It is recommended to have a registered trademark since it gives you immediate right to defend or action against misuse. This relates also when asking for damages. Nevertheless, unregistered trademark enjoy protection under the unfair competition laws. For more information: trademark symbols.

Relative grounds – Not necessarily lead to invalidation to the trademark since can only be raised in opposition proceedings. These includes: prior IP rights of others (an older registered trademark), non-use of a trademark for a certain period of time etc. Only a proprietor of an earlier mark may oppose on relative grounds.

Renewal – This is a period when a trademark maintain its validity from an administrative aspect. By law, trademark registrations have 10 years of protection and they have indefinite renewal time period. Registration cancelled due to this reason, if the need arise can not be revived but shall be registered anew.

Three dimensional mark – mark that consists of a shape of a product or its packaging. There is a thin line between three dimensional marks and the industrial design however, they are protectable if they do not lack any originality to be easily distinguished or if they do not represent a ordinary shape or shape that come from its nature or function.

Trade marks – could be any word including personal names, designs, letters, numerals, sound marks, three-dimensional designs, the shape of goods or of their packaging, as well as other wrapping, as well a colours and colour combinations. The core purpose of the trade mark is to serve as a recognizable sign with two main ideas; to identify the source of products or services and to distinguish the trademark owner’s goods and services from those of others. The main question when registering a trademark is “Do I want to be known by this name in the trade?”.

Trademark Symbols
Trademark symbol notify the public that the goods and services are marketed under a certain brand.

  • ® – the “r-in-a-circle” symbol next to a mark means that the mark is registered
  • ™ symbol means that the mark is not registered but is in use by the company for promoting the goods
  • SM symbol means that the mark is not registered but is in use by the company for promoting the services

Trademark infringement – Unauthorized use of a trademark in a way that is highly likely that it will cause confusion about the source of the goods or services among the consumers population. Infringement can occur mainly to a registered trademark. The main criteria for assessing infringement are the unlawful use of an opponent’s trademark, in the commerce, respectively in the course of the trade, and the central focus is the degree of likelihood of confusion between the earlier and the later trademark. The more similar or related are the signs as well as the goods or services, the greater the possibility of trademark infringement.

Use of the trade mark – The proprietor has the exclusive right to use the trademark in the commerce in relation to the goods and services for which the protection has been granted. Usage generally involves marketing products and brand the reputation for the company’s goods and services. In case of infringement the owner can file a civil action. The trademarks can be subject in the course of trade, they can be sold and bought.

Vienna classification – International Classification system with the purpose to classify the figurative elements of the marks on the basis of their shape and at the same time to facilitate trademark searches at the international level. For a valid registration purpose, the applicants are required to include in the the official documents the categories, divisions and sections of the figurative marks applied for registration.

Well-known mark – Marks that have a high degree of recognition and reputation due to the long lasting and intensive use in the trade, regardless whether they are registered or not. The scope of protection of the well known marks is not restricted only to the goods and services that are protected but also to other category of services that might indicate some connection between the well known mark and the goods and services in question, (eg. Google, Microsoft, Mcdonald’s).

WIPO (World Intellectual Property Organization) – International Organization under United Nations. The general aim is to to promote protection of Intellectual Property throughout the world. WIPO is responsible for registering trademarks only if they are protected on a national level in their respective countries. Located in Geneva, Switzerland.

Word mark – trade marks that consist of the standard set of characters like words and letters and any characters that could be typed. It can also be combination of numbers and letters. Slogans are also considered as word marks. (eg. Just do it, Herbalife, Levi’s )

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A glossary on Copyright

Adaptations and transformation – common types of a derivative work indeed a new version of an already existing work. That refers to a new creation that relies on an earlier protected work; hence, the second work becomes original work with independent copyright. Substantial change to the previous work is required for protection and it always go along with a prior consent of the creator of the original work.

Anonymous work – Work that i published with an undisclosed, unknown creator or author or the author’s name in some way is not acknowledged. The copyright protection shall expire after 70 years after the work has been lawfully made available to the public.

Architecture work – An original design of a building created in any tangible medium of expression, including a constructed building or architectural plans, models, or drawings, is also subject to copyright protection. In essence, protected is the overall form as well as the arrangement and composition of space and elements in the design. In this regard, the there are specific rules that apply when it comes to determining the author in case of joint participation.

Artistic works – Any are particularly graphic works that includes mainly paintings, drawings, maps, photographs, sculptures and collages. Those works enjoy copyright protection and as alike all other their works their owners have exclusive rights with regards to this goods, i.e to reproduce, publish and communicate to the public.

Audiovisual work – The official definition is that these are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines, or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied. Audiovisual work are protectable under copyright law. This, per se, means that the term “audiovisual works” refers broadly to any work that includes any series of related visual images, whether or not moving, and with or without sounds, as long as a machine or device is essential to the viewing of the related series of images.

Author – person that is the creator of the work and it is always natural person. In case of several person jointly creating a work, without possibility to separate the respective shares, they are joint authors. Exception: author is not the creator of the work itself if the work is commissioned for ordered for use.

Berne Convention for the Protection of literary and artistic works – The most important international treaty regarding the copyright law, with the idea to set a minimum harmonized standards aiming to protect the creator of the work. Came in force on September 9, 1886 in Berne, Switzerland. In essence, the Berne Convention clearly distinguishes the various types of works that could be copyrighted and establishes principles that shall be applicable in any county regardless where the work originate from. Moreover, the Convention clearly incorporates stronger author’s rights and reduces the protection formalities. Administered by WIPO.

Choreographic works – Choreographic works consist of composition and arrangement of movements indeed dance with the idea to be performed together with music.Their purpose is to be organized coherently and to present aggregated whole. Choreographic works also enjoy copyright protection and the performer is the one owning the rights.

Cinematographic works – Subcategory of an audiovisual work namely any work that embodies visual recording supported by a moving image on any medium. A typical example of cinematographic works is the movies and the produces is considered as author of the work. The others from the film crew (cameraman, actor, screenwriter, composer) have their individual right on their performance.

Collective work – is a joint work consisting of several separate existing material that are assembled into one which, as such is as a whole enjoys copyright protection . As a rule every consisting part of a collective work is, by any means copyrightable as individual element. Notable to many are the collective works such as encyclopedia, periodical issue etc.

Copyright – is intellectual property protection of an original work fixed on material object from being reproduced without the owner’s consent. Several requirements apply: the work has to be done by a person (works done by nature itself or animal works can not be copyrighted) as a result of the creator’s effort and skills and to be fixed in a material form.

Copyright Infringement – Unauthorised use of copyrighted work. The sole infringement act consists of copying, distributing or adapting a work without permission. The most frequent forms of infringement are unauthorised copying of protected content to a work that is distributed to the public, all diverse types of digital reproduction including downloading on the internet; photocopying when it comes to protected printed material. In technological era, encompassing the legal and technological measures to protect a work is also considered to be infringement.

Copyright symbols – The symbol © (the letter C in a circle) is usually used to denote copyright protection. The sign ℗, (P in a circle) refers to sound recording, phone records and phonogram. The permanent usage of the signs is not required for a work to be protected, moreover its function is only informative to present that a work enjoys copyright protection.

Databases – generally rest under the concept of trademark compilation and are also protected by copyright law. The protection of the databases is granted due to the systematic and methodical way they are arranged, if the whole work manifest certain level of originality.

Derivative works – work that is based upon another work; notwithstanding crucial is the latter work to embody the new author’s originality. Derivative work include all various adaptations of a work such as adaptations, translations, remixing previously released music, creating a sequel to a film etc. Editorial revisions, elaborations and modifications also belong in this category. Generally derivative work require prior permission of the right holder.

Duration of copyright – Copyright protection is secured automatically and is protected as soon as it exists, based generally on the life of the author plus with an extension from 70 years of the death of the creator. With respect to joint authors the copyright expires after the death of the last surviving author.

Exceptions – known as limitations of the copyright protection.In this category fall: criticism,parody, satire, reporting, person research or study, using works in judicial proceedings and works that help to enable more easily access to people with disabilities. These exceptions are known under the fair use doctrine in certain states. Other exceptions are using without remuneration for education purposes, public speeches, quotation, for private and other personal use in particular the main criteria for assessment the limitations are if the usage of the work by a third party not serve for a gaining a commercial interest and profit.

Joint work – work prepared by two or more individual without possibility for the parts of the authors to be individually isolated and besides, separately exploited. The protection depends on the author’s involvement and each joint author has protection to the extent of his/her contribution.

Literary works – Fundamentally, literary works are works intended to be read; they are not intended to be performed before an audience and generally their core idea is expressed in writing, through the use of narrative, descriptive, or explanatory text all works regardless whether they have literary merit. Standard literary works are: novels, manuscripts, reports, poems, articles, essays, speeches etc.

Material/ exploitation rights – Rights that can exclusively depend on the authors disposition how to use the work or whether to prevent others from using it without permission. The exploitation rights generally tend to enable the creator the right to use, to authorize use of, to set conditions or to prohibit use of the work. Only the creator has the right t use and reproduce the work, make the work available to the public, via recitation, performance and presentation …etc. Public is deemed anyone who is not connected by a personal relationship with the person exploiting the work. In any reverse case the owner can report the violation and ask for compensation. Nonetheless, the exclusive rights are time limited rights and after the period the work is in public domain.

Moral rights – Permanently linked rights to the creator that shows the link between the creator and the work. These rights perpetually belong to the author even if the author transfer the work because they are considered as reward for his/her creative input. This class of rights is composed of: right to claim authorship of the work, the right, moreover freedom to decide about publishing the work or not, right to prohibit any changes and modifications that will distort his work.

Musical works – Work that consists of music,composition or any melodies and harmonies, including any accompanying words and arrangement of instruments. The author of a musical composition is generally the composer and the lyricist. Musical works enjoy copyright protection.

Pantomimic works – The are also works that could be copyrightable. Pantomime is any act indeed the sole act of imitating, presenting, or acting out situations, characters, or events through the use of physical gestures and body movements. Pantomime as well as the other works has to have a story and to be fixed in a tangible medium in order to be protected and the author is the one performing the work.

Phonogram/Sound recordings – Phonograms are letter of combination or combination that represent a sound. Unlike works of the nature or animal works, animal and nature sounds are eligible to be copyrighted by the person who record them (eg. animal noises, ocean waves etc). Phonograms are copyrightable if they their performance or the other sounds is fixed on a medium. The phonogram producers have, as well as the author, has an exclusive right to grant a licence for the direct or indirect reproduction of the whole or a part of the phonogram, and to the distribution of the original or copies of the phonograms. The graphic symbol ℗ ; P-in-a-circle- stands for phonogram.

Plagiarism – concerns mostly literary works and is commonly known is presenting someone else’s work as your own. In this category falls copying words or ideas from someone else without giving credit to the author or not properly indicating the source of the information, wrong quotation etc.

Pseudonymous work – Work where the author’s identity is provided as a fictitious name i.e does not include the author’s actual identity but rather another name. Pseudonyms date long time ago when the art was banned and nowadays are adopted to hide the author’s real identity.

Public domain – Under public domain falls any work that is available to the public, indeed everything that can be freely used by anyone. In light of this, Works in public domain basically refer to works that can not be protected at all(exceptions of copyright protection), or works after the expiration of the copyright protection. Anyone can use a work in public domain without obtaining permission.

Public performance – any act or displaying the work in front of many people that are in no way related with the work itself. Performance is generally, considered as “public” if it take place in a public place and the audience is outside of a normal circle of friends and family. The rights of performance includes public reading of literary works, public performance of music, scenographic or any performance of choreographic or pantomimic works.

Right as an author – The legal institute copyright enables two exclusive rights that always follow the author. Those are material/exploitation rights and moral rights. The material rights are always linked to a financial reward moreover benefit and moral rights protect the non economic interests. In light of this material rights are authorization or prohibition of • reproduction of the work in various forms (such as printed publications or sound recordings) • distribution of copies of the work • public performance of the work • broadcasting or other communication of the work to the public • translation of the work into other languages • adaptation of the work, such as turning a novel into a screenplay. Moral rights only allow authors and creators to take certain actions to preserve and protect their link with their work. Only the material rights can be transferred to a third party.

Royalties – amount paid to the creator resulting from the sale or performance of the work. In general, revenues are paid to the legal owner by those who use the work for generating revenue.

Scope of copyright – The scope of protection generally depends on the kind of the protected work i.e the author has exclusive right to reproduce the work, prepare derivative works based upon the work, distribute copies of the work to the public, perform the work publicly (for music,play, dance, motion, pictures), display the copyrighted work publicly (paintings, sculptures, photographs). Perform the work publicly by means of a digital audio transmission (in the case of sound recordings). The owner may also authorize others to exercise these rights by giving license for effect of one or several of this rights.

Work for hire – This concept objective is the specific situation when an employee creates work within his employment responsibilities or the issue when the work is specially ordered or commissioned for use. In case of work for hire patterns, the author is not considered as creator of the work but rather the owner is the one who commissioned and paid for the work. In case the work has been done in scope of one’s employment duties, the employer is owner of the work.

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