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 )

Copyright FAQ

What is Copyright – Copyright is form of protection for original works i.e intellectual creations products of the human mind. Copyright protects all kind of creative works only if they are created by a human being as a result of its effort and skills.The work is protected by copyright from the moment it is created and fixed in a tangible/material form and there is no special paperwork required for obtaining copyright protection. Anything unmaterialized and unrecorded is not copyrightable.The copyright holder can prevent others to use his work (in any form like performing, copying, adapting, all ways of making available to the public etc) without his consent. The copyright legal protection is designed as a reward to creators to encourage further intellectual creativity and innovation, on the other hand to easily enable access for the community to the intellectual property products.

Basics of Copyright Law – The Copyright law is legal protection given to the creators for their original creation to encourage future creativity and the development of new material which benefits the society in general. The copyright law itself serve as an incentive to encourage the creator with a financial benefit, on the other side aims at promoting the access to knowledge. The protection lasts the whole author’s life plus 70 years after the creator’s death and the sole work is considered copyrightable directly after its completion. It is noteworthy to mention that there is no age limit for copyright protection; in particular minor’s work also enjoys copyright protection. The basic principle under the copyright law is that only the creator is authorized to decide what happens with his work and his exclusive rights are twofold- material and moral. The Nonetheless to fulfill the second purpose- easier access to knowledge the copyright law embodies certain limitations and exceptions that validate the ground for which an idea expression can be subject to a monopoly.

Works Protected by Copyrights – The Copyright law in general protects expressions of an idea fixed in a material form i.e ideas embodied in written literary works (novels, poetry works, plays, speeches) musical works (all types of musical compositions) and pantomimic works (body movements), choreographic works (dance), photographic and artistic works (paintings, drawings, maps, charts, sculptures) architectural works (building plans) and cinematographic works (films, videos), computer programmes and databases. Derivative works i.e work that is based upon another work, such as translations and adaptations of a work, new formulations or digitized editions, remixing a previously released music, creating a sequel to a film using characters from the original are also protected under copyright law.

Can I protect a name, slogan title, character, concept with copyright?
Certain things does not qualify for copyright protection. Among them are:
Names (first names and surnames) are not protected by copyright law. The primarily focus of the names is protecting the competitor of using the name in the trade. Nevertheless, some names may be protected under trademark law.

The same applies for titles of a book, popular slogans, and short phrases. If copyright is applied to the titles that would mean that anyone that uses the title can be in breach of copyright, Moreover, copyright also prohibits unauthorised adaptations and any modification or derived words, will fall under copyright. This leads to the effect that no one can use this document in a copyright. The core aim of copyright is to support creative authorship and it is not designed to protect how that work is identified in the market. The same goes for people and places. Short phrases of this kind and slogans hardly meet the minimum level of creativity and originality to be under copyright protection.
Concepts and ideas do not qualify for protection except that they are materialized within a specific impression (embodiment) via screenplays, plays, plays etc. The sole existence of loglines, character notions, themes, verbal pitches do not enjoy protection.
Fictional characters and story lies are copyrighted if they are original. unique and substantial enough to be awarded copyright protection.

What is not copyrightable (copyright exceptions) – Preconditions for copyright protection are expression of an idea and this idea fixed in a tangible form. Therefore, everything not fixed in a tangible form and ideas as such are not copyrightable. Likewise, the copyright does not protect: theories, mathematical and methods, concepts or principles, procedures, processes or discoveries. Moreover, it is not protectable under copyright law, work that consists only of well known information (telephone dictionaries, notebooks), official texts from juridical, political, administrative or legislative nature and their translations. Other category among the copyright exceptions include news with only normal medium character, well known information and facts. Works that are not copyrightable are also the works which duration has expired. This moreover means that after the ascertained period of 70 years the work can be freely used. (eg. Mona Lisa with moustaches is not breach of the right because the legal rights and remedies have expired. Nevertheless the new,derivative work itself is under copyright protection)

Copyright limitations – To comply with copyright law, one must receive permission from the copyright holder or pay remuneration before using any protected content.
However, there are cases where the the copyright law is not to such extent applicable due to some more important social interests as freedom of speech (using work for criticism, review, parody, reporting only if it is fair use) educational uses (teaching in classrooms), and among the exceptions is reproduction only for private and other personal uses. In any of the cases, precondition is that the exploitation shall not conflict with a the normal exploitation of the work and shall not be used for gaining any commercial benefit. Moreover, in detail, the limitations include: making copies of the work only with the aim to transfer data; multiplication of the work done by libraries or educational institutions, museums or archives without any economic and commercial benefit; using works with illustrational or educational purpose or scientific researches; work that is intended to be used by a person with invalidity for non commercial purpose; using protected work works only with proper citation; using the work in the judicial, administrative and legislative procedure; using public speeches to a degree that justifies its purpose; etc.

Scope and duration of Copyright Protection – Depending of the copyrighted work the owner has exclusive rights indeed legal right to stop others of using his property without his permission. Rights, generally recognized by all law traditions that belong to the author are material and moral rights. The common and most prominent rights with material or economic benefit are the exclusivity to: reproduce the work in any manner or form, perform the work in public, distribute copies or displaying the copyrighted work publicly, broadcasting or other communication publicly, translation of the work in other languages, adaptations, modifications etc. Worth to mention in this context are the new forms of communication to the public (e.g. broadcasting, cable retransmission, making available to the public) This, moreover means that the owner may also authorize others to exercise these rights. Moral rights are alienable and basically protect the integrity of the work and relationship between the work and the author. In defining the scope of the copyright is also the core role play the established exceptions (what can not be protected at all ) and copyright limitations (special cases to use a protected work but only if it does not conflict the the author’s legitimate interests). As with regards to the duration, The copyright lasts during the whole life of the creator and the protection expires 70 years of the author’s death. In case of joint authors the protection expires after the death of the last surviving author. As for the anonymous and pseudonymous works they enjoy copyright protection 70 years since they have been lawfully made available to the public.

Copyright Holders and work for hire – Author is always considered the creator of the work. If multiple authors have jointly created the work, they are all considered as creators of the work with regards to their respective contributions. Nevertheless, on the author’s discretion, copyrighted works can be lawfully and freely transferable as property via giving license. Worth mentioning is the fact that only the material rights can be willingly transferred, whereas the same does not apply for the moral rights. A humble exception from the presumption that the author is the creator of the work is the doctrine – work for hire. In this specific situation, the creation of the piece is often on behalf of another. This concept includes cases when an employee creates work within his employment responsibilities, or a person creates a work as a result of its contractual obligation or service relations or, proceeding on the same track, the issue when the work is been specially ordered, or commissioned for use. In case of work for hire contracts, the original author is not legally recognized as an author of the work, and the rights wholly belong to the one who commissioned and paid for the work (eg. commission pieces from famous composers). In case the work has been done in scope of one’s employment duties, the employer is owner of the work. The reasoning behind is that the work is done as part of the creator’s job, yet following some instructions and under supervision and in some case even using the commissioner resources and facilities. In all jurisdictions the authorship of a instructed work is granted only with an existence of a written contract between the parties.

Copyright and other types of Intellectual Property – Copyright is one part of the broad category that fell under the umbrella of the intellectual property indeed different types of protection available for IP rights. Copyright protects original work only fixed on material object and the protection lasts 70 years after the author’s death. On the other hand there are other rights that are created by the human mind that have different scope and diverse duration period. Particularly, Patent law protects inventions, if they are original, if they have an inventive step and are recognized for some form of practical industrial application. The patent protection lasts 20 years from its filing date and can not be renewed. Trademark law protects signs that are used to distinguish one business from another and to identify particular good or service. Trademarks do not have an expiration period if they are constantly renewed properly. Industrial design protects the visual design of the objects i.e the appearance or aesthetic feature of the product. Inicial industrial design protection last 5 years and it can be renewed, every 5 years yet the maximum term of protection is 25 years from the filing date. Trade secrets are any business information that companies keep private to give them a business advantage over their competitors(eg. recipe, formula or design to a device, piece of software or general know-how ) and they are not registered anywhere.
Nonetheless, although there is a disparity between all different types of intellectual property rights, they overlap to a certain extent and have many things in common. Firstly, they all protect creations of the human mind and provide adequate property protection to incentivize investment in innovation and creativity. The different term of protection is estimated and based on the potential benefit for the public. Nevertheless, nowaday due to the expansion in scope of the IP rights, it can come that some rights protect same works, still with divergent term of protection. For this also speaks the fact that it is permissible to protect different aspects of a product or creation under different bodies of IP.Copyright and Patent law protect creations that originally could be protected with industrial design.Classic example is that almost anything, including a specific characteristic of a product, can potentially be a trademark today if it signals to consumers that the product comes from a specific producer or seller.

Notice of Copyright – Notice of copyright has only informative nature, i.e this institut notifies the public that a certain work is protected by copyright; explicitly showing since when the duration protection has begun. The notice primarily consists of an sign – the symbol © (the letter C in a circle), placed on a work. For phonorecords the symbol ℗ is used. A copyright notice (i.e. ©) is generally not required for a work to be protected by copyright law nonetheless, using it confers certain benefits to the copyright holder. The notice basically consists of three elements: the copyright symbol, the year of first publication and the copyright owner.
eg. © year of publication, copyright owner.
Moreover, it is quite common for more throughout protection to insert statements as All rights reserved; or Reproduction is authorised, provided the source is acknowledged.
The notice is always affixed to the copies that are visually perceptible (eg.literary works) and when it comes to works when it is impractical for a notice to be added, it shall be placed on a spot that should not be concealed from view upon reasonable observation.

Copyright infringement – Infringement is any kind of unauthorised use of copyrighted work. The sole infringement act, in substance consists of violation of one or more of the exclusive rights that only the author alone can exploit legally. The most common one are: the right to reproduce (copy) a work(infringement is when someone else and not the author multiplies the work eg. making illegal copies ) ; the right to create derivative works based upon it( compose sequels of a novel, mixing previous published music, generally everything that uses work that is earlier done); the right to distribute copies of the work to the public; the right to publicly display or perform the work. Therefore the most frequent forms of infringement are closely linked to those exclusive rights in particular typically referred as i.e unauthorised copying of protected content to a work that is distributed to the public (commonly known as piracy), all diverse types of digital reproduction including downloading on the internet; file sharing, photocopying when it comes to protected printed material. In technological era, encompassing the legal and technological measures by which a work is protected is also considered as infringement.
Similar violation to copyright infringement is the plagiarism and although they two overlap, they also have key differences. 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. Many plagiarisms are copyright infringement, nevertheless not all not all plagiarisms are infringements and not all infringements are plagiarisms. Plagiarism often covers things that are not covered by copyright. Ideas, facts and general elements can be plagiarized, yet can not be copyrighted. Getting permission to use a work can not qualify as copyright infringement,still it could be plagiarism is the work is presented as its own.

Copyrights and the Internet – The Copyright protection is mildly said, facing new challenges when it comes to new technologies and the infringements are more frequently done wia the new technologies. The information that is free available on the internet does not mean that it is free to copy. All electronic materials are easier to access, copy and distribute via networks. Therefore there are not many instructions that shall be followed for better protection on the internet if you are the copyright owner. (eg. register copyright of photos or text; insert copyright notice adjacent to image and text, disable the function double click to easily save the content, or in case of literary work, use the function only preview, use monitoring tools and metadata to search for the infringer, etc).
Other practical instructions would be: If you express ideas in your own words, always give appropriate credit to the sources when you take an an idea or facts,yet it might be considered as derivative works unless one have obtained license or permission. It is safe to say that the pictures on internet are generally covered by copyright, although they are made available to the public. If the owner offers a license(either free or for a fee), one should comply with the license and the rules in it. Making covers of a song is allowed if the fees are paid.

Advantages of Registering Your Copyright – The copyright protection is automatically created upon the completion of an original work, fixed in a tangible medium of expression. Nevertheless, the registration provides many extra benefits and additional remedies, post factum, in case of infringement. Apropos to this, registration mean, per se, evidence of your ownership and the work itself can be easily found by third parties and efficiently authenticated. The process of registration, per se, could be seen as additional protection because it facilitates the court procedure in case of infringement. There is no exact time limit for registration and the registration can happen anytime during this period of 70 years after the creator’s death. Another advantage is in case of infringement any defendant’s assertion about lack of knowledge that the work is protected claiming that it is an innocent and negligible infringement, does not bear relevance for the Court proceeding, as the foundation lies in the registration process as additional guarantee of authorship.