1. What is a trade mark?

A trade mark is any sign that distinguishes the goods and services of one trader from those of another.

In most countries, a trade mark must meet two requirements in order to be validly registered: it must be distinctive and capable of graphic representation.

2. What signs can constitute a trade mark?

A trade mark can include, for example, words, logos, letters, numbers, colours, pictures, three-dimensional forms, signs perceived by the senses (sound, smell, taste and touch) or a combination of these, provided it overcomes the graphic representation requirement.

3. What is a trade mark for?

A trade mark is a badge of origin, which allows consumers to identify and recognise the goods and services offered by a certain trader.

4. Why is it advisable to protect a trade mark?

Registering a trade mark provides the proprietor with the exclusive right to use it and with effective protection against copying, imitation, misappropriation, forgery or use of its reputation.

5. How can I obtain the right to a trade mark?

The right to a trade mark may be obtained in two ways:
By use:

The right to a trade mark belongs to whoever uses that specific sign for the first time in an effective way to designate goods or services on the market.

Some legal systems provide for the protection of non-registered trade marks if they have a certain popularity in the market and are recognised by consumers.
By registration:

The exclusive right to a trade mark is obtained by registering the sign at a trade mark office.

Through registration, the holder obtains the right to exclusive use of the mark, as well as the right to forbid third parties to use identical or similar signs.

The protection granted by the registration of a mark is broader than the protection conferred by its simple use. Hence, the enforcement options associated wtih a trade mark are more effective because it is easier to prove who the holder is.

6. Which signs may not be registered

Absolute prohibitions:

A sign may not be registered if:
it cannot be represented graphically;
it is devoid of any distinctive character;
it exclusively serves to designate the characteristics of the goods or service;
it has become a usual or common way to designate the goods or services it refers to;
it is contrary to public policy or to accepted principles of morality;
it is of such a nature that it may mislead the public;
it consists of a shape imposed by the nature of the product, or a shape necessary to obtain a technical result or which gives a substantial value to the good or service;
it reproduces or imitates the name, coat of arms, flag, medals or other symbols of countries or intergovernmental organisations.
The prohibitions included in sections b), c) and d) may be overcome.
Relative prohibitions:

Relative prohibitions are aimed at protecting earlier third party rights (existence of an earlier trade mark, existence of an unregistered trade mark or another earlier distinctive sign, existence of personality right) that could be affected by the registration of the subsequent trade mark.

7. What territory is covered by the protection of my trade mark?

The protection of a trade mark covers the geographic territory of the country (national trade mark) or region (Community trade mark) where protection is requested.

8. What rights are granted by the registration of a trade mark?

The exclusive rights granted by the registration of a trade mark consist of the following:
Exclusive use of the trade mark in the market.
The right to prevent non-authorised third parties from using an identical or similar trade mark for goods or services identical or similar to the ones under the registered trade mark.
The right to prevent by administrative proceedings the registration of trade marks that can be confused with your own.
The right to request the cancellation of subsequent trade marks that become confused with yours.
The right to transfer, sell or licence the trade mark like any other company asset.
There are some limits to trade mark rights.

9. How long does the exclusivity right granted by a trade mark last?

In most countries, trade mark registration lasts 10 years, renewable indefinitely for 10-year periods.

10. s it compulsory to use a trade mark?

Under most national laws, the proprietor of a trade mark must use the trade mark in trade in a real and effective way and in relation to the goods and services for which the trade mark has been registered.

It is normally the proprietor who makes use of the trade mark by placing it on goods. However, there are many other ways to use a trade mark, e.g. in advertising.

11. Are there any sanctions for not using a trade mark?

The main sanction for cases of “non-use” of a trade mark is the expiry of the registration and the impossibility of objecting to the registration of new trade marks.

12. How can a trade mark owned by a third person be used?

Trade marks can be the object of different sorts of contracts, for example a cession, licence, mortgage, bond or other property right as well as the object of seizure or other measures resulting from an enforcement procedure.

13. What circumstances would provoke the cancellation of my trade mark?
A trade mark can be cancelled for the following reasons:
Expiry
Non-renovation of the trade mark registration.
Surrender (resignation) of the trade mark proprietor.
Lack of effective use of the trade mark during an uninterrupted five-year period for the goods or services for which it has been registered.
Vulgarization of the trade mark.
When the trade mark is of such a nature that it may mislead the public.
Nullity
For registering the trade mark by infringing the absolute or relative prohibitions of registration.
When an application is made in bad faith.

By
Dr. Rafaele Turkienicz – Abdo Worldwide – 2010.