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Trademarks, An Introduction

Even though trademark law varies from country to country, most countries have adopted a more or less uniform approach to trademark protection. Accordingly, the following information may vary from country to country and is to be considered as a brief and simplified outline only which is merely supplied for the convenience of our clients or potential clients.

1. General
In general, a trademark is defined as any sign, or any combination of signs, inherently capable of distinguishing the goods or services of one undertaking from those of other undertakings. Furthermore, where such a sign or combination of signs is not inherently capable of distinguishing, distinctiveness may be obtained through use thereof.

Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three-dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colours used as distinguishing features. In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist. Collective marks are owned by an association which allows its members to use its mark in respect of their goods/services, thereby distinguishing the goods/services of members from similar goods/services of non-members. Often the goods/services of members of an association are recognized as being of a certain quality or complying with other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects. Certification marks are marks capable of distinguishing goods/services of a specific kind, quality, quantity, intended purpose, value, geographic origin or other characteristics from goods/services not complying with these characteristics. The owner of the mark may not be involved in the relevant trade and acts purely as a certification authority. The internationally accepted "ISO 9000" quality standards are an example of such widely-recognized certifications.

A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely on payment of additional fees.

Trademark protection is enforced by the courts, which in most legal systems have the authority to order a party to cease infringing a registered trademark. In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark law may also be used to hinder the efforts of unfair competitors, such as counterfeiters, who attempt to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

Although registration of a trade mark is not compulsory, it is advisable to apply for registration, because registration provides a cost-effective way to preventing infringement, and also prevents others from appropriating and registering your trade mark. In addition, registration is a guarantee of immunity to infringement actions based on the registered trade marks of other parties.

A trade mark may be used prior to the application for registration thereof. Such use can sometimes strengthen the position of a trademark owner. If such use is sufficiently extensive that a reputation is generated, and members of the public come to associate the mark with the person/entity making use thereof, common law rights may be acquired in the mark. These rights exist independently of statutory trade mark rights, which are acquired through registration.

It is, however, safer to apply for registration before using the mark for the following reasons: firstly, the application may be rejected because it is unsuitable for registration. In such cases it is still possible to amend the mark or choose an altogether new mark before money is spent on advertising, stationery, etc. Secondly, the only effective means of preventing unauthorized use by other parties during the early stages of use of the mark is a valid registration.

There are many pitfalls in Trademark Law and Practice that should be avoided when choosing a mark for registration. Our advice in such matters is at your disposal.

3. Searches
Clients are strongly advised to instruct us to conduct a search for conflicting marks on the relevant register before using or applying to register a mark. This may save you considerable inconvenience and expense later on. We also recommend that we conduct searches of the corporate name and domain name registers to ensure that there are no conflicting entries on these registers.

4. Procedure for obtaining trademark protection for your marks
The process for obtaining trademark protection begins with an application for registration of a trademark to be filed with the appropriate national or regional trademark office. The application must contain a clear reproduction of the mark filed for registration, including any colours, forms, or three-dimensional features. The application must also contain a list of goods or services in respect of which the mark is to be used. The mark must fulfill certain conditions in order to be protected as a trademark or other type of mark. It must be distinctive, so that consumers can distinguish it as identifying a particular product. It must neither mislead nor deceive customers or violate public order or morality. Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner.

Whether a proposed trademark is sufficiently dissimilar to any marks already on the register may be determined through search and examination by the national office. Third parties who claim similar or identical rights will also be granted an opportunity to oppose new trademark applications. Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks which contains full application information on all registrations and renewals, facilitating examination, search, and potential opposition by third parties. The effects of a trademark registration are, however, limited to the country (or, in the case of a regional registration, countries) concerned. In order to avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. A person who has a link (through nationality, domicile or establishment) with a country party to one or both of these treaties may, on the basis of a registration or application with the trademark office of that country, obtain an international registration having effect in some or all of the other countries of the Madrid Union. At present, 77 countries are party to one or both of the agreements.

The Madrid system for the international registration of marks (the Madrid system) was established in 1891 and functions under the Madrid Agreement (1891) and the Madrid Protocol (1989). This system is administered by the International Bureau of WIPO located in Geneva, Switzerland.

Thanks to the international procedural mechanism, the Madrid system offers a trademark owner the possibility to have his trademark protected in several countries (Members of the Madrid Union) by simply filing one application directly with his own national or regional trademark office. An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that Office.

The following countries are members of the Madrid Union: Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Bulgaria, China, Croatia, Cuba, Cyprus, Czech, Democratic People's Republic of Korea, Denmark, Egypt, Estonia, European Community, Finland, France, Georgia, Germany, Greece, Hungary, Iceland, Iran (Islamic Republic of), Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Monaco, Mongolia, Morocco, Mozambique, Namibia, Netherlands, Norway, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, San Marino, Serbia and Montenegro, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, The former Yugoslav Republic of Macedonia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Vietnam, and Zambia.

The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step. Further countries may be designated subsequently.

The first step (for our South African clients) to obtaining trade mark protection in several countries is normally the filing of a trade mark application at the South African Trade Marks Office. Please click on the title "South African Trade Mark" for more information, in this respect.

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