What is a Trademark?
A trademark is any word, name, phrase, symbol or device, slogan, package design or combination of these that serves to identify and distinguishes a specific product from others in the market place or in trade. Trademarks come to represent not only actual products and services, but the reputation of the producer. As such, they are considered valuable intellectual properties and, in many cases, the owning corporation's most valuable asset. A registered trademark can be protected through legal proceedings from misuse and imitation.
The term trademark is often used interchangeably to identify a trademark or service mark.
What Do the Symbols ®, TM, and SM Mean?
A ™ is usually used to indicate an unregistered trademark. It is an informal notification that there is a public claim as a trademark.
An SM represents an unregistered service mark. It is also an informal notification that there is a public claim as a service mark.
The ® (commonly pronounced "R-in-a-circle" or "Circle-R") is a warning notice to advise the public that the mark is registered and their use provides legal benefits. This notice can be used only with registered marks. Use of a ® with any unregistered trademark may result in claims of fraud.
What is the Difference Between a Trade Name and A Trademark?
A trade name is used to identify a company or a business and serves as the name of the company or a business. On the other hand, a trademark or service mark is used to identify the source of the products or services that the company or business sells or provides. However, a trade name can also function as a trademark or service mark depending upon the context in which it is used. If a trade name is used as more than just the company name and informs consumers where a product or service is coming from, then it is being used as a trademark or service mark.
Are All Trademarks Registrable?
No. The following are the main kinds of non-registrable trademarks in most countries:
1- The marks that lack distinctiveness, i.e, trademarks that are mere description of the products they represent, or familiar drawings and ordinary pictures of goods and products.
2- Any mark violating the public morals or desecrating the public order.
3- Marks which may mislead the public as to the origin or the source of products or services, or about their other characteristics.
4-Trademarks that are considered as an imitation/translation of a famous mark or another previously registered trademark if registration of that mark will result in confusing the consumer public as to the goods distinguished by the mark or other similar goods.
5- Trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view.
What is the Classification of goods/services?
To provide limited monopoly over the marks, goods and services are divided into several "classes" according to the International Classification, and the protection of the mark would be restricted to certain class(es). Most countries adopt this system. In some countries a separate application for the registration of a trademark has to be filed for each class of goods/service, while in other countries one application could be filed for several classes (multi-class applications).
What is a Convention Priority?
Paris Convention states that if any party who has filed an application for the registration of a trademark in a certain country can file another application in another country within six months as of the filing date of the first application claiming priority right. This means that the second application will be considered as if it were filed on the date of the first application. This is obviously beneficial for the second application in case another party filed an application for a similar trademark between the filing dates of the first and second applications; the third party's application will be rejected on the ground of such priority right. This is only applied to the contracting states of Paris Convention for the Protection of Industrial Property.
Does a Trademark Registration in one country give protection in other countries?
No. every trademark should be registered under the jurisdiction of the countries it is to be used in. However, it is possible to file an application in a group of countries, such as European Union, Madrid Protocol, OAPI, etc.
ADVANTAGES OF TRADEMARK REGISTRATION PROTECTING YOUR MOST VALUABLE ASSET
Due to the continuous extension of today's global market and competition domains, the protection of your business name has become more important than ever before. Advances in communication media and internet has widely spread information amongst the public all around the world. This has made it easier for a competitor to make use of your valuable reputation.
Thus, if you intend to have a brand and proceed with advertising, it is much safer to protect this brand and make it a registered trademark. Otherwise, third party's imitation of your trademark would be quite possible making use of the effort and money you have exerted in building up your reputation. Imitation might also take place innocently.
Whether innocent or willful, infringement of your trademark is hard to overcome if it is not duly registered. Defending non-registered trademarks usually entails long procedure of Court cases, which in most cases take a long time to be settled and significant amount of money, taking into account that a favorable Court decision is not guaranteed in all cases. This means that your registered trademark may well be your most valuable asset.
The following are the major benefits of registering a trademark:
1- Protects the business and owner from significant financial loss as a result of possible infringement.
2- Gives the registrant exclusive legal ownership over the mark, and exclusive right to use the mark nationwide.
3- It refrains others from claiming that your trademark is an infringement upon theirs.
4- It is an official proof of precedence of the trademark, which means that any party that intends to have a confusingly similar mark can not claim ignorance of existence of previously registered mark.
5- The registered trademark will appear on any search report requested by third party, who intends to use and register a similar trademark. Therefore, such appearance may urge this party not to apply for this similar trademark registration.
6- It grants the owner the right to recover damages and attorney's fees from a possible infringer.
7- In the countries that examine trademark applications, the Trademark Office will refuse any application for the registration of a trademark that is confusingly similar to yours.
8- A registered trademark is a prerequisite for franchising a business.
9- A registered trademark can be marked with the sign ® alerting others from using or claiming rights in your trademark.