Trademarks

A trademark is a legally protected word, logo, symbol or combination thereof or any other sign that helps identify the goods or services of one business and set them apart from those of others. It shows where the goods or services come from and gives the owner the exclusive right to stop others from using the same or a similar mark without permission, especially if it could confuse customers about the origin of the goods or services. 

The proprietor of a registered trademark holds the exclusive right to initiate infringement proceedings to prevent the unauthorised use, in the course of trade, of identical or confusingly similar signs in connection with goods or services identical or similar to those for which the mark is registered. 

In certain jurisdictions, unregistered marks may also be protected under common law, provided they have acquired distinctiveness through use. Such rights are typically enforceable only within the geographic area where the mark has become distinctive, or where a reasonable expectation of commercial expansion exists. 

Trademark infringement includes, inter alia, the unauthorised use of identical or similar signs for identical or similar goods or services, where such use is likely to cause consumer confusion as to the origin of the goods or services. 

Subject to limited exceptions, trademark registration is initially granted for a term of ten (10) years and may be renewed for successive ten (10) year periods upon submission of a renewal application and payment of the applicable renewal fees. Certain countries require the filing of a Declaration of Use to maintain trademark rights after registration and compliance with these requirements is critical to preserve trademark protection and avoid cancellation or lapsing of trademark rights. Examples of countries with such requirements include United States of America, Philippines and Mexico. 

In order to qualify for registration, a sign deemed eligible must fulfil two essential and cumulative legal criteria: (i) Availability (the sign must not conflict with any pre-existing rights or prior registrations); and (ii) Distinctive Character (the sign must possess the inherent or acquired capacity to distinguish the goods and/or services of one undertaking from those of another), in relation to the specific goods or services for which registration is sought. 

Registrable trademarks may comprise words, names, phrases, logos, symbols, designs, images, or any combination thereof. Non-traditional marks - such as colours, sounds, scents, motions, or other non-standard indicators - may also be registrable, provided they are capable of graphical or other adequate representation, enabling both the competent authorities and the public to ascertain the precise scope of protection. 

A trademark is considered available where no prior conflicting rights exist that could prevent its registration. This requirement falls under the category of relative grounds for refusal, meaning that the existence of earlier rights may, upon opposition or examination, preclude the registration of the applied-for sign. Such a conflict may arise, for instance, where the sign is identical or confusingly similar to an earlier trademark and is intended to be used in relation to identical or similar goods or services, thereby giving rise to a likelihood of confusion on the part of the relevant public. 

Moreover, a trademark application may be refused where the sign is identical or similar to an earlier reputed mark, and its use would, without due cause, result in an unfair advantage being taken of the distinctive character or repute of that earlier mark, or where such use would be detrimental to the same.  

Availability may also be compromised where the use of the sign could be lawfully prevented on the basis of prior rights, including designations of origin, geographical indications, or earlier unregistered rights that possess more than mere local significance. In each of these scenarios, the existence of conflicting earlier rights may constitute a bar to registration. 

In addition to being available, a trademark must possess distinctive character, meaning it must be capable of distinguishing the goods or services of one undertaking from those of another. This requirement constitutes an absolute ground for refusal, and it applies irrespective of the existence of prior rights. In essence, for a sign to function as a trademark, it must enable the relevant public to identify the commercial origin of the goods or services to which it is affixed and to distinguish them from those of other undertakings. 

Registration shall be refused where the mark is found to lack inherent distinctiveness— that is, where the sign, in its ordinary meaning or appearance, does not immediately and inherently convey any indication of origin. This is often the case where a mark is composed of elements that the average consumer would perceive merely as descriptive or generic. 

Specifically, refusal is warranted where the sign consists exclusively of words or symbols that serve to designate, in trade, characteristics of the goods or services, such as their kind, quality, quantity, intended purpose, value, geographical origin, or the time or mode of production. Such signs are considered descriptive and are therefore incapable, by their nature, of fulfilling the essential function of a trademark. 

Likewise, a mark shall not be registered where it comprises signs or indications which have become customary in the current language or in the bona fide and established practices of the relevant trade. These are elements that the average consumer would perceive not as an indication of commercial origin, but rather as commonplace expressions or references, thereby lacking the requisite distinctiveness to serve as a trademark. 

In all such cases, the failure to meet the standard of distinctiveness constitutes an insurmountable bar to registration, unless the applicant can demonstrate that the sign has acquired distinctiveness through use in the market prior to the date of application. 

Trademark protection is territorially and categorically confined to the specific goods or services for which the mark is registered, as classified under the internationally harmonised Nice Classification, which comprises 45 distinct classes. This principle, known as the principle of speciality, dictates that trademark rights are not absolute but rather limited to the categories for which protection has been sought and granted. As a result, it is generally permissible for identical or similar trademarks to coexist, provided they relate to goods or services that are dissimilar and unlikely to give rise to confusion among the relevant public - for example, the use of the mark Lotus for automobiles, confectionery, and timepieces, respectively. 

However, an important exception to this principle applies in the case of well-known (or famous) trademarks, which enjoy an enhanced scope of protection. Pursuant to Article 6bis of the Paris Convention and its incorporation into national and EU trademark law, a well-known mark may be protected even in relation to goods or services that are dissimilar to those for which it is registered. This extended protection is intended to prevent unfair advantage being taken of, or detriment caused to, the distinctive character or repute of the well-known mark. Accordingly, the unauthorised use of a famous mark in unrelated categories may constitute infringement where it results in dilution, tarnishment, or free-riding on the mark’s established reputation. 

In accordance with established principles of trademark law, a registered trademark must be put to genuine use within an uninterrupted period of usually five consecutive years in connection with the goods and/or services for which it is registered. Failure to make such use, without proper justification, may result in the mark becoming liable to revocation - either wholly or partially - on the grounds of non-use. 

Accordingly, it is incumbent upon applicants to exercise due diligence when formulating the scope of their trademark claims. Overly broad or speculative registrations, which are not supported by actual or intended commercial use, may render the mark susceptible to cancellation actions. A strategic and realistic assessment of the goods and services for which protection is sought is therefore essential to safeguard the long-term validity and enforceability of the registered right. 

Trademark protection is acquired through the formal procedure of filing an application for registration, which must specify the goods and/or services in respect of which protection is sought, and within a defined territorial scope. Such territorial scope may encompass individual jurisdictions (i.e. specific countries), or broader regional systems such as the Benelux or the European Union. 

It is important to note that within the Benelux territory, trademark protection is granted exclusively for the entire Benelux region. Protection cannot be conferred for one of the Benelux countries individually; the registration automatically covers all three. The same is true for the European Union trademarks: EUTM protection is granted exclusively for the 27 Member Countries of the European Union 

Typically, applicants initiate trademark protection in their country or region of origin, and subsequently seek to expand protection internationally. This may be accomplished by filing an international application under the Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO), and/or by submitting individual national or regional applications, whether or not priority is claimed from the initial (first) filing. 

In accordance with prevailing practice across the majority of European trademark offices, the examination of a trademark application is generally limited to a formal review and an assessment on the basis of absolute grounds for refusal. This process entails verification of formalities such as the accuracy of the applicant’s details, the correct classification of goods and services under the Nice Classification, and an evaluation of the sign’s inherent distinctiveness, descriptiveness, and compliance with other absolute requirements. 

Provided that no objections are raised on absolute grounds, the application advances to the publication stage. At this juncture, third parties are afforded the opportunity to file an opposition based on relative grounds, typically invoking prior rights. Should no opposition be filed within the prescribed statutory period, or if any such opposition is ultimately unsuccessful, the trademark application proceeds to registration, and the mark is duly entered into the trademark register. 

Trademark protection is territorially and categorically confined to the specific goods or services for which the mark is registered, as classified under the internationally harmonised Nice Classification, which comprises 45 distinct classes. This principle, known as the principle of speciality, dictates that trademark rights are not absolute but rather limited to the categories for which protection has been sought and granted. As a result, it is generally permissible for identical or similar trademarks to coexist, provided they relate to goods or services that are dissimilar and unlikely to give rise to confusion among the relevant public - for example, the use of the mark Lotus for automobiles, confectionery, and timepieces, respectively. 

However, an important exception to this principle applies in the case of well-known (or famous) trademarks, which enjoy an enhanced scope of protection. Pursuant to Article 6bis of the Paris Convention and its incorporation into national and EU trademark law, a well-known mark may be protected even in relation to goods or services that are dissimilar to those for which it is registered. This extended protection is intended to prevent unfair advantage being taken of, or detriment caused to, the distinctive character or repute of the well-known mark. Accordingly, the unauthorised use of a famous mark in unrelated categories may constitute infringement where it results in dilution, tarnishment, or free-riding on the mark’s established reputation. 

Yes. As the proprietor of a pre-existing registered trademark or certain other rights, you may file an opposition against a subsequent trademark application, provided certain legal conditions are met. Grounds for opposition may include, inter alia: 

• The later mark is identical or confusingly similar to your earlier trademark, and the goods or services designated in the application are identical to those for which your earlier mark is registered; 
• The later mark is identical or similar to your earlier trademark, and the respective goods or services are identical or similar, provided there exists a likelihood of confusion on the part of the relevant public within the territory in which your earlier trademark is protected, which may include the likelihood of association; 
• The later mark is identical or similar to a trademark which enjoys a reputation in the relevant territory, and use of the mark applied for, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of your earlier mark. 

Opposition proceedings are typically subject to strict time limits and must be filed with the appropriate intellectual property office following publication of the contested application. 

While not generally mandatory under European trademark law, trademark holders may choose to use the following symbols to signify the status of their mark: 

™ to indicate an unregistered trademark (i.e., a trademark which is being used in commerce but has not yet been registered); and 

® to indicate that the mark is officially registered. 

It must be emphasised that the ® symbol may only be used in relation to a mark that has been duly registered. The improper use of the ® symbol - particularly in jurisdictions where the mark is not registered - may constitute misleading conduct, and in certain countries, including some within Europe, may give rise to administrative or even criminal sanctions. 

In contrast, jurisdictions such as the United States impose stricter regulations concerning the use of trademark symbols. There, the use of the ® symbol not only requires valid registration but may also afford the rights holder enhanced legal remedies in the event of infringement, including eligibility for statutory damages and attorneys’ fees.