WORLD INTELLECTUAL PROPERTY ORGANIZATION INTRODUCTION TO TRADEMARK LAW & PRACTICE THE BASIC CONCEPTS A WIPO TRAINING MANUAL GENEVA 1993 (Second Edition) ( ( WIPO PUBLICATION No 653 (El ISBN 92-805-0167-4 WIPO 1993 PREFACE The present publication is the second edition of a volume of the same title that was published by the World Intellectual Property Organization (WIPO) in 1987 and reprinted in 1990. The first edition was written by Mr. Douglas Myall, former Assistant Registrar of Trade Marks, United Kingdom. The present revised edition of the publication has been prepared by Mr. Gerd Kunze, Vevey, Switzerland, and reflects his extensive expertise and experience in the administration of the trademark operations of a large international corporation, Nestle S. A., as well as his intensive involvement, as a leading representative of several international non-governmental organizations, in international meetings convened by WIPO. This publication is intended to provide a practical introduction to trademark administration for those with little or no experience of the subject but who may have to deal with it in an official or business capacity. Throughout the text, the reader is invited to answer questions relating to the text. Those questions are numbered to correspond to the answers that are given, with a short commentary, in Appendix I. Arpad Bogsch Director General World Intellectual Property Organization February 1993 ( ( LIST OF CONTENTS CHAPTER 1. TRADEMARKS AND OTHER SIGNS: A GENERAL SURVEY 7 1.1 Use of trademarks in commerce . 9 1.2 What is a trademark?. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 9 1.3 Need for legal protection .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 10 1.4 How can a trademark be protected? .. .. .. .. .. .. ... .. .. .. .. .. .. .. .. .. 10 1.5 The functions of a trademark . 11 1.6 Service marks . 11 1.7 Other signs . 12 1.8 Protection against unfair competition, counterfeiting and piracy . 12 CHAPTER 2. WHAT CONSTITUTES A REGISTRABLE TRADEMARK? 13 2.1 Signs..................... ........................................... .. 15 2.2 Distinctive signs . 17 CHAPTER 3. UNREGISTRABLE SIGNS (EXCLUSION FROM REGISTRATION)...... 19 3. 1 Lack of distinctiveness . 21 3.2 Exclusions from registration on other grounds-public interest. 30 CHAPTER 4. TRADEMARK REGISTRATION.... .. ..... .. .. .. .. .. 35 4.1 Who can apply for registration of a trademark?... 37 4.2 Registration requirements. 3 7 4.3 Exa1nination . 38 4.4 Refusal of registration .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 40 4.5 Date of registration . .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 40 4.6 Duration and renewal.......................... .................... .. 40 4.7 Publication and access to the register . 41 CHAPTER 5. USE OF THE MARK . 43 5.1 Need for an obligation to use................ ...... .......... ....... 45 5.2 Practical use requirements....... ........... .. ..................... 45 5.3 Consequences of non-- use............................................. 47 5.4 Proper use of trademarks.............. .............................. 47 CHAPTER 6. RIGHTS ARISING FROM TRADEMARK REGISTRATION 49 6.1 The right to use the trademark.. 51 6.2 The right to exclude others from using the mark................. ... 52 6.3 Restrictioin of the exclusive right in the public interest... 60 6.4 Remedies for trademark infringement . .. 61 CHAPTER 7. REMOVAL OF THE TRADEMARK FROM THE REGISTER 63 7.1 Removal for failure to renew . 65 7.2 Removal at the request of the registered owner . 65 7.3 Removal for failure to use............................................ 65 7.4 Cancellation on account of nullity . 66 7.5 Removal of a mark that has lost its distinctiveness . 66 6 CONTENTS CHAPTER 8. CHANGE OF OWNERSHIP . .... ......................... 67 8.1 Reasons for change of ownership ............. ..................... 69 8.2 Voluntary change of ownership: Assignment ....................... 69 8.3 Recorda! of change of ownership .......................... .......... 70 8.4 Formalities ............... .. ......... .......................... ...... 71 CHAPTER 9. TRADEMARK LICENSING .......... .. .................... 73 9.1 lmportance of licensing . ....................... ..... .. ........ ..... 75 9.2 Basic concept: control by the owner ................................ 75 9.3 Formal requirements ...... ......................................... 76 9.4 Restricti ons on the licensee ..... .. ............ ... .. ............ 77 CHAPTER 10. SERVICE MARKS ......... ................................ 79 10.1 Function of service marks ............. ...... .. .. ......... ..... .. 81 10.2 Protection of service marks .................. ... ......... ....... 81 10.3 Criteria to be applied ........................... .. ................... 82 ( CHAPTER 11. COLLECTIVE (CERTIFICATION) MARKS AND APPELLATIONS OF ORIGIN ............................. 85 11.1 Collective and certification marks ............. ... ......... ... ...... 87 11.2 Appellations of origin . .............................................. 89 CHAPTER 12. TRADE NAMES ........................ ..... ............... 91 12.1 Legal requirements ........ ... .......... .... ... .. .... ... 93 12.2 Legal protection .. .. .......... .. .............................. ... .... 93 CHAPTER 13. UNFAIR COMPETITION .... ....... ..... .................. 95 13.1 Trademark piracy ............................. .. ......... ........... 97 13.2 Counterfeiting .. .. ................ ... .................. .... ......... 98 13.3 Imitation of labels and packaging .... ... ... ..... ....... ...... 99 CHAPTER 14. OBTAINING PROTECTION FOR MARKS IN SEVERAL ( COUNTRIES: THE MADRID SYSTEM.................. 101 14.1 Introduction............... .... ................. .. ................... 103 14.2 The Agreement........ .... .................... ...................... 104 14.3 Shortcomings of the Agreement for certain countries ... ........ 108 14.4 The Protocol.... ... .. ................. .. ............................. 109 14.5 Application of the Protocol and relationship to the Agreement . 112 14.6 Conclusion....... 114 APPENDIX I. ANSWERS TO QUESTIONS POSED IN THE TEXT, WITH COMMENTARY............................ ........ 115 APPENDIX 11. THE INTERNATIONAL CLASSIFICATION OF GOODS AND SERVICES FOR THE PURPOSES OF THE REGISTRATION OF MARKS............................... 131 APPENDIX Ill. LIST OF fMEM-B-M STATES PARTY TO THE MADRID f-·f t.r AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS ON JANUARY 1, 1993 . 139 CHAPTER 1 TRADEMARKS AND OTHER SIGNS: A GENERAL SURVEY ( { ( TRADEMARKS AND OTHER SIGNS: A GENERAL SURVEY 9 CHAPTER 1 TRADEMARKS AND OTHER SIGNS: A GENERAL SURVEY Trademarks already existed in the ancient world. Even at times when people either prepared what they needed themselves or, more usually, acquired it from local craftsmen, there were already creative entrepreneurs who marketed their goods beyond their localities and sometimes over considerable distances. As long as 3,000 years ago, Indian craftsmen used to engrave their signatures on their artistic crea­ tions before sending them to Iran. Manufacturers from China sold goods bearing their marks in the Mediterranean area over 2,000 years ago and at one time about a thousand different Roman pottery marks were in use, including the FORTIS brand, which became so famous that it was copied and counterfeited. With the flourishing trade of the Middle Ages, the use of signs to distinguish the goods of merchants and manufacturers likewise expanded several hundred years ago. Their economic impor­ tance was still limited, however. Trademarks started to play an important role with industrialization, and they have since become a key factor in the modern world of international trade and market-oriented economies. How can this be explained, and what is the role trademarks have to play? 1.1 Use of trademarks in commerce Industrialization and the growth of the system of the market-oriented economy allow competing manufacturers and traders to offer consumers a variety of goods in the same category. Often without any apparent differences for the consumer they do generally differ in quality, price and other characteristics. Clearly consumers need to be given the guidance that will allow them to consider the alternatives and make their choice between the competing goods. Consequently, the goods must be named. The medium for naming goods on the market is precisely the trademark. Businesses also need trademarks to individualize their products, however, in order to reach out to consumers and communicate with them. So, trademarks serve their owners in the advertising and selling of goods, and they serve the economy in a general sense by helping to rationalize the commercialization of goods. By enabling consumers to make their choice between the various goods avail­ able on the market, trademarks encourage their owners to maintain and improve the quality of the products sold under the trademark, in order to meet consumer expecta­ tions. In a market that offers a choice, a consumer who is disappointed will not buy the same product again. One who is satisfied will tend to rely on the trademark for his future purchase decisions. Thus trademarks reward the manufacturer who constantly produces high-quality goods, and as a result they stimulate economic progress. 1.2 What is a trademark? From these deliberations on the function and role that the trademark plays in the market, one can deduce a definition of the trademark: "A trademark