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 :
- the sign applied for lacked distinctiveness (eg. too generic, too descriptive and suggestive terms )
- descriptive terms that must be kept free for general use (eg. “sweet” for confectionary products)
- 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
- 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 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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