marți, 1 septembrie 2015

The Trademark. Basic notions, vectors of the trademark

Hoping the following article will help those who want to know something (or more) about trademarks.

The Trademark

Basic notions, vectors of the trademark

Where should we start when defining the notion ”trademark”, so that to be certain that it is the beginning, I mean the "beginning of the beginnings”?

And how, and why, to talk about trademark anymore, in a world of ”brands” where everybody, or almost everybody, aims to build their own ”brand” without talking about trademark?

Well, we could start building our story based on the old saying that „advertising is the soul of commerce”, right? 
We even not finished the sentence and the critics will emerge: “- Advertising is too new, on the historic scale, to be considered as the beginning”.

And you know what? They are right. The only thing is that I did not mean by that sentence what disturbs us all in the modern world, on all possible communication channels.

What I had in mind was that old cry, nowadays almost disappeared, at the fairs or whatever the way people of old made commerce (dear critics, we can agree that commerce is old, can’t we?). It was that cry that made people gather around one particular wagon or stall (sometimes a ragged blanket on the ground) just because there was something there interesting enough for them to have it.

To have it!

But of course, now we have our start! Here began everything!

The wish of mankind “to have”, this is the “beginning of the beginnings”. And this wish was strong both for the one yelling to praise what he was selling and to the one(s) willing to trade anything just to have it.

Nice so far, but what about the trademark?

Well, the trademark is born from the same human wish “to have”, but “to have” slightly more than others!

When the merchandise of our vocal seller started to be looked for, he also started to have more. Other people were looking for him in order to get his merchandise, recognizing him after his face – first trademark! And after that, our guy decided to mark somehow his merchandise, for trading it in such a way to make all know that it belongs to him, and to make other buyers - who did not see him yet, to know that it is his stuff and to look for him and his trade.

Later, all kind of things started to happen. First of all, there was another man who made a lot of trade with our “marking” guy and it was good, because he had more. Another time, somebody else came to him complaining that his stuff was not good; when they both checked, the mark and the good were a little bit different and definitely not coming from our guy – the first counterfeit!

Not long after, the other man who was making a lot of trade with our hero asked him to change the mark on the merchandise and offered to pay him more and he was true to his word and our hero had more and more.

Still, even though he changed the mark as was requested by his partner, he still scribbled somewhere less visible on the merchandise, the initial mark ”Handmade by Buru-Bara” as the others called him....

Obviously I am joking! Actually just telling a story! But believe me, our hero made a mark, either a detail in the construction, either carved in stone or he made two knots on a rope who was supposed to have only one, or chiseled two lines on a column supposed to have three, or any kind of a particular sign.

And from here on, things evolved the way we all know and traces of marking (signing by a mark) are to be found in all kind of information sources.
But finally, what is the trademark?

The World Organization for Intellectual Property (WIPO) body of United Nations (UN) located in Geneva, Switzerland, posts on its website the following definition: “A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.”

The Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks provides a more extended definition: A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

The Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark provides the same definition as the EC directive, above.

In Romania, the Law no. 84/1998 on trademarks and geographical indications modified by the Law no. 66/2010, adopts the following definition for a trademark: ” Trademarks may consist of any sign capable of being represented graphically, such as: words, including personal names, designs, letters, numerals, figurative elements, three-dimensional shapes and, particularly, the shape of goods or of packaging thereof, colors, combinations of colors, holograms, acoustic signals, as well as any combination thereof, provided that such signs are capable of distinguishing the goods or services of one enterprise from those of other enterprises.”

Unfortunately, by no identified reason, these definitions are yet poor, they do not disclose everything on trademarks, even though they speak about them and worse, they do not highlight what is really important, i.e. the difference between a trademark and any other sign used as a mark.

Except the definition of WIPO, which includes the fact that trademarks are protected by IP rights, the others do not even suggest what a trademark really is, reducing its meaning to just one of its components, that is the sign. I would not go so far as saying that this deficiency is the root cause of the current confusion between trademark and brand, but it is very near. We have no choice but to live with these small or not so small deficiencies in the “system”, speaking of which, here is another one.

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), adopted in 1994 and ratified by Romania in the same year, says at Art. 15(1) that member states may require, as a condition of registration, that signs be visually perceptible. Perhaps somebody thought that during the current (r)evolution of means of communication, and trademarks cannot be separated from the communication act, it would be better to evolve from the concept of “graphical representation” to the one of “visual perception”. Unfortunately, the definitions which are subsequent of TRIPS did not maintain this evolutionary trend and the definitions of trademark are now blocked in the obsolete form of “graphical representation”.

Coming back to the main topic of this discussion, the trademark cannot be defined as a sign in a globalized economy where the competition is the key factor. Instead, in order to have a better understanding of the term trademark, it should be clearly stated that this sign has to be registered first for some goods & services, and only then we can talk about a trademark.

Please allow a short parenthesis. It's true that there are different trademarks filing systems, but this issue is not the object of this article. Anyway, it is speaking about two filing systems and even in the "first to use" system, only the registration of a trademark transforms it in a really weapon on the market.
This new wording would confirm, would emphasize that a trademark is a combination of three vectors that ensure a certain volume of protection, as a consequence of registration. We are referring here to the sign, the list of goods & services associated with that respective sign and, finally, the (geographical) territory where that protection is valid.

These three vectors – the sign, the list of goods & services and the territory – define the volume of a certain trademark protection in the sense that they certify the exclusive right to use it once it is registered (fig 1). Again, without preliminary registration we cannot refer to a trademark. We can only refer to it as a sign used in commerce, but it is important to bear in mind that a sign does not have the power nor the authority of a trademark registered for a certain territory.

Considering we are ignorant when it comes to "religion" of the trademarks, let’s try to uncover the ‘volume of protection’ that a trademark can ensure. We will start with the individual analysis of the three vectors that we previously mentioned that are already familiar to us, going from what we know towards the unknown and gain complexity along the way.

Hence, we will start with the territory, as this element is the easiest to comprehend, being the most clear in the current context. Even though the frontiers are more and more blurred, we can still talk about independence, about sovereignty, about a legislative system unique for every country. Consequently, the territory vector will be quite easy to understand, having in mind that a registration for a trademark is made upon a law valid on a clear and limited territory.

We will then continue with the analysis of the second vector, the list of goods & services. The comprehension of this element depends on the interest manifested towards registering a trademark. This vector has a traceability determined by the international regulations related to the classification of certain goods and services for which we are trying to register a trademark. Except some particularities, the list of product & services vector will be relatively easy to understand as well.

The sign registered as a trademark was not left to the end due to its difficulty, but due to a certain dose of subjectivism present in the process of evaluation. There are rules, of course, but the perception of the sign is subjective, the feeling generated by a certain sign depends on many factors and it can be different for every individual consumer. For this reasons, the sign vector will be analyzed last, considering it is the most important aspect that guarantees the success of a trademark.

Let’s review once more the definitions that we gave for a trademark.

It is easy to notice that there is a common ground between all the examples given above. This common ground is the distinctiveness, in the sense that the most important aspect of a trademark is the capacity to distinguish the goods or services of one company from the ones of another company.

This distinctiveness is not a joke. This is a characteristic that can be difficult to understand, but we have to bear in mind that it is one of the most important criteria that needs to be met when it is trying to register a trademark.

As repetitio mater studiorum est I will explain again.

The distinctiveness of a trademark, as specified in the above definitions as well, is the capacity to distinguish between goods or services, specifically being able to differentiate between the goods and services of one company and the ones of a different company. So, clearly the distinctiveness relates to brand itself relative to the goods & services that are offered under that mark and not to compare that mark with another, or worse, with many identical or similar marks are previously registered. There is a big mistake in saying that a trademark is devoid of distinctiveness because it is identical to another trademark that was previously registered. These are the consequences of such a statement.

Our logic guides us toward the conclusion that a certain notion needs to correspond to its own definition, right? Consequently, you cannot state that a trademark is devoid of distinctiveness and so it cannot be registered because it is identical to another trademark. In such cases, the trademark that was registered first could also be accused of devoid of distinctiveness as much as the first one. Hence, where is the error?

I will use another example, already a classic, hoping to clarify these aspects.

The combination warm bread is devoid of distinctiveness when it comes to bakery goods. Obviously, anyone can bake warm bread and if these two words are written on the package there is no way to find out who the producer is. There is a totally different thing, however, if the same combination of words in used for alcoholic beverages, for example. In a context as this one, the combination of words warm bread registered as a trademark for alcoholic beverages cannot be considered to lack distinctiveness only because it was registered before for bakery goods. This would mean that no word from the dictionary can be used to register a trademark because it has a meaning of its own, but it is completely untrue, as the databases are full of trademarks based on common words.

On the other hand, let’s suppose that we have a trademark registered based on a fictional word, a word that does not exist in any dictionary related to the goods or services under that specific trademark. This would be an example of a trademark with a high degree of distinctiveness. If an identical trademark is requested to be registered for the same goods or services, it cannot be stated that it is devoid of distinctiveness because there is an identical trademark previously registered. In other words, the lack of distinctiveness is not measured by the number of identical or almost identical trademarks that operate in a certain market.

If there are two identical trademarks operating in the same marketplace, we face to likelihood of confusion between the producers, which is a totally different topic opposed to the lack of distinctiveness of a trademark. The possible occurrence of likelihood of confusion, perhaps in combination with the likelihood of association, involving reactions of owners or applicants, special procedures brought before some authority ... but they are part of another debate.

We’ve shown so far that a trademark, registered of course, generates a volume of protection and exclusive rights based on three different vectors, none of which being the distinctiveness discussed above.

After all these statements on the importance that the distinctiveness has when it comes to a registered trademark, you are entitled to ask what does the distinctiveness of a trademark consists of? How can it be described to ensure it is easily understood?

When it comes to a trademark, the distinctiveness is a very important aspect that deserves our entire attention. This is a topic that we will address in another article, but until then it is important to know that, considering the volume of protection given by the three vectors already known to us, the distinctiveness is represented by the consistence, the density of that volume of protection for the goods & services under that specific trademark. Consequently, if a trademark has a high degree of distinctiveness, it is much known, everybody is talking about it, then the volume of a such a trademark would have the consistency of a granite. Some call it notorious trademark, others trademark with a reputation or well known (fig.2). 
On the contrary, if a trademark has a low degree of distinctiveness, barely meeting the conditions for registration, it would mean that the volume of protection of such a trademark would have a consistency similar to the fog that sticks to the ground on spring (fig.3). Such a trademark is vulnerable and requires a huge budget for promotion thus hoping that was not bestowed on it at birth, might be gain by its use, i.e. distinctiveness.

But let’s not divert from what we previously agreed – first let’s focus on the vectors analysis.

I will see you, then, in "the territory" and I will be very glad to receive your comments on 

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