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A description off a trade mark which serves two ends

Trademarks: Conditions of protection

See Article History Alternative Title: Trademarks may be words or groups of words, letters, numerals, devices, names, the shape or other presentation of products or their packages, colour combinations with signs, combinations of colours, and combinations of any of the enumerated signs. By indicating the origin of goods and services, trademarks serve two important purposes.

They provide manufacturers and traders with protection from unfair competition one person representing or passing for sale his goods as the goods of anotherand they provide customers with protection from imitations assuring them of a certain expected quality. In most countries, registration is a prerequisite for ownership and protection of the mark.

In the United Stateshowever, the trademark right is granted by the mere use of the mark; registering the mark provides the owner only with certain procedural advantages and is not a prerequisite for legal protection. It is not necessary for the mark to be in use before a registration application is filed, although most countries require applicants to have a bona fide intent to use the mark after registration.

  1. This is a personal choice that each company needs to make.
  2. How do you know a mark has acquired a distinctiveness?
  3. Usually you find out through consumer surveys. Some examples of marks that are descriptive but have achieved a secondary meaning are.
  4. Knowing that you may be able to acquire distinctiveness in a descriptive mark over time may sway you to choose this option if you don't have a large marketing budget to start. In all cases, this representation must be clear, precise, complete, easily accessible, intelligible, durable and objective.
  5. A long period of continued use of the mark Heavy advertising in terms of reach and expenditure A mark that's achieved a secondary meaning is usually entitled to the protections granted to suggestive, arbitrary and fanciful marks. Holders of these previous trademarks may, in certain cases, undertake opposition proceedings against the registration request or they may, after authorisation of the trademark, introduce a cancellation procedure for the trademark in order to cancel the more recent trademark.

Formerly, the United States was one of the few countries requiring actual use prior to registration. Under the Trademark Law Revision Act of 1988, the United States permits registration upon application attesting to an intent to use the trademark in the near future. In many countries, ownership of a trademark is not acknowledged until the mark has been registered and gone uncontested for a given period of time, so as to afford protection to a prior user of the mark.

Even after that period has passed, the prior user may move to have the registration canceled. After a certain number of years from three to seven, depending on the countrythe registration and ownership become uncontestable. For a mark to be registered, it must be distinctive. In many cases a mark, when first brought into use, may not have been distinctive, but over time the public may have attached a secondary meaning to it, forming a specific association between the mark and the product, thus making the mark distinctive, hence registrable.

In most countries, including the United States, protection against infringement extends to goods or services similar to those covered by the registration. In countries following British law some 66 nationsan infringement action can, however, be brought only for the precise goods identified in the registration. For a long time the rights of a trademark could not be transferred separately from the business to which it was attached.

Now, however, because trademarks are deemed property, they may be sold, inherited, or leased, as long as such a transfer of rights does not deceive the public. In most countries a public notice of such a transfer must be given.

  • Your product or service needs to be differentiated from your competitors' by the mark name, logo or phrase;
  • Placed near a trademark, they describe a product or service concisely;
  • If you decide to go for a fanciful or arbitrary mark, there are tools you can use to educate the consumers right away:

A common form of transfer is international licensing, whereby a trademark holder allows the use of his mark in a foreign country for a fee. Often in such instances the foreign licensee must meet certain product quality requirements so that his use of the mark does not deceive the consumer. There are some instances in which the right of trademark may be lost.

  • Thinking long-term about your mark is vital;
  • However, money saved on the front-end in advertising results in other costs spent on the back-end when dealing with cease-and-desist letters and litigations.

The two most serious reasons for loss of trademark are the failure to use a registered trademark and the use of a trademark that becomes a generic term. In many countries if a trademark is not used within a certain number of years, the rights of protection of the mark are forfeited.

  1. If so, an initially descriptive or non-distinctive sign may still be registered as a trademark. Other companies think that being creative is the key.
  2. Kodak cameras and film Arbitrary Marks Arbitrary marks are words of common knowledge in English that are used to describe a product that doesn't have any connection to the common definition. How Can Marks Be Categorized?
  3. Placed near a trademark, they describe a product or service concisely.

In other countries the courts are not concerned if the mark is considered generic, and the original trademark holder retains all rights and privileges of the mark. Although each nation has its own trademark law, there are increasingly multinational efforts to ease registration and enforcement practices.


The first international agreement was the Paris Convention for the Protection of Industrial Property of 1883which has been regularly revised ever since. It sets minimum standards for trademark protection and provides similar treatment for foreign trademark holders as for nationals. Approximately 100 countries are party to the Paris Convention.

In addition, nearly 30 countries mostly European but including Morocco, Algeria, Vietnam, and North Korea adhere to the Madrid Agreement, which provides for a single application process through filing in a central office located in Geneva. Learn More in these related Britannica articles: