Articles


What are trade marks?

A ‘trade mark’ has to satisfy a number of conditions in order to enjoy protection under trade mark law.

Article 15(1) of the TRIPS Agreement provides that “any sign, or any combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings shall be capable of constituting a trade mark.”

Prerequisites

Generally speaking, these signs can include words, including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs.

Over the past few years, a wide variety of companies are attempting to obtain protection for what is generally referred to as “unconventional marks”: scent marks, sound marks, and the like.

Some interesting examples include the Metro-Goldwyn-Mayer Corp. was granted protection in the United States of America for ‘a lion roaring.’ In June 2000, following a courtroom dispute that had lasted more than six years, Harley-Davidson Inc. brought an end to its fierce attempt to file the characteristic sound of its V-Twin common crank pin motorbike as a trade mark, with the trade mark application foundering against the ardent protest of the predominant competitors of the company, which had brought similar motorbikes onto the market. At the same time, scent marks were accepted in the United States.

Furthermore, a trade mark must serve to distinguish the goods or services of one undertaking from the goods or services of another undertaking. This criterion contains both an objective and a subjective element.

The subjective element means that the aim of the user must be to use the sign as a means of distinction for his goods or services. The objective element requires that the sign must be suited for distinctive purposes and that the public coming within the scope of consideration must twig the user’s intention and comprehend the sign as a trade mark. The manner in which the user displays the sign can affect the public’s understanding.

The distinctive power of a trade mark is by no means a constant. Thus, a trade mark that initially possessed inadequate distinctive character may over time become distinctive, in which event the trade mark is said to be generally perceived as a trade mark. By contrast, a trade mark can lose its distinctive character if it degenerates into a typical name or descriptive indication for the item concerned.

Mere descriptive trade marks generally cannot serve as a trade mark for the products or services they refer to. Therefore, the word mark ‘APPLE’ is considered to be descriptive when used in relation to fruit; on the other hand, if it is used in order to distinguish certain types of computers, it can indeed constitute a strong ‘brand.’