Trademarks and Service Marks - Essay Example

Messrs Soil can prevent the Tom brothers and Salisbury’s from marketing their bags in by using the common law. They have been using the markfor a year and in fact have been successful in marketing the same in their trade. Being the first to manufacture and put into commercial circulation the tompot bag, they a have acquired trademark rights on it. Trademarks and service marks are words, names, symbols, or devices used by manufacturers of goods and providers of services to identify their goods and services, and to distinguish their goods and services from goods manufactured and sold by others (Radcliffe and Brinson, n.d.). Trademarks could be any combination of words, names or symbols that are used in commerce as brand names, tag lines, slogans, non-functional and distinctive packaging and labeling designs, etc. to indicate the source of a product or service. Only non-functional elements are protected by law as trademark rights Functional aspects of a product or service are covered under patent law with a limited term of protection whereas trademarks are not limited in term (except by nonuse) (Trademarks Basics, n.d.). The law that protects registered trademarks and trademarks registration in the UK is the Trademark Acts of 1994 as amended (Intellectual, n.d). In addition, the European Union has implemented regulations to harmonize the laws of trademarks among its member states, including the United Kingdom (The trademarks, n.d). If a trademark is not registered, the original creator does not necessarily lose all rights to his works. Under UK common law, it is possible to take civil action. To make a successful claim, the owner must prove that the mark belongs to him, that the alleged owner has built a reputation using this mark and that he has suffered some damage because of the unauthorized use (Ibid). Trade marks can also be protected in the United Kingdom via common law rights established under what is called "passing off." The "passing off rights are established by the use of a brand and the establishment of goodwill (Registering, 2008). However, it is preferable to register a mark, as opposed to relying on common law passing off rights, as you have to prove that you have established goodwill to succeed in a passing off action. Also, passing off rights can be limited to a local area, whereas a UK Trade Mark registration automatically covers the whole of the UK (Ibid). The doctrine of Common law “passing off” works in a way that the owner of a mark can acquire some rights without registering his mark. A trader who uses a mark acquires “goodwill” in association with that mark. “Goodwill” has been defined as the quality, which causes a customer to go to one particular trader rather than any other (Ibid). The owner of a trademark can sue another trader who uses that mark in such a way as to confuse the public into believing that his goods are those of the owner of the mark. This is a “passing-off” action (The Basics, n.d.). At common law, a trademark is obtained by adopting and using the trademark, in association with goods or services offered for commerce ( Larson, 2003).. The mark must be placed in actual use before protection is available. Once the mark becomes associated in the mind of the public with the particular good or service, the common law trademark is established. Ordinarily, the geographic scope of the common law trademark is limited to the area of use. The three fundamental elements to passing off are reputation, misrepresentation, and damage to goodwill, which are sometimes known as the classical trinity, as restated by the English House of Lords in the case of Reckitt & Colman Ltd v Borden Inc [1990] 1 RPC1 341 1 (the Jif Lemon case) (Passing n.d). Passing off does not recognize them as property in its own right, but prevents one person from misrepresenting his or her goods or services as being the goods and services of another person or the plaintiff in infringement proceedings. The law of passing off is designed to prevent misrepresentation to the public where there is some sort of association between the plaintiff and the defendant (Ibid). Misrepresentations include: using the mark of the plaintiff's product, using the get-up of the plaintiff's product, using the plaintiff's advertising theme and using the design or shape of the plaintiff's product (Ibid). Passing off occurs when a person holds out his or her goods or services as having some association or connection with the plaintiff when this is not factually true. The plaintiff need not prove actual or special damage, a real and tangible probability of damage is sufficient for a claim of damages. Whether damage is done can be considered an acid test for which misrepresentations are actionable, and those that are beneath notice of the law (Ibid). The plaintiff can initiate action against the defendant in a situation where the defendant does something so that the public is misled into thinking the activity is associated with the plaintiff, and as a result the plaintiff suffers some damage (Ibid). Passing off is a common law tort, which can be used to enforce unregistered trademark rights. Statutory law such as the United Kingdom Trade Marks Act 1994 provides for enforcement of registered trademarks through infringement proceedings. A cause of action for passing off is a form of intellectual property enforcement against the unauthorised use of a mark which is considered to be similar to another party's registered or unregistered trademarks, particularly where an action for trademark infringement based on a registered trade mark is unlikely to be successful because of the differences between the registered trademark and the unregistered mark (Ibid). In order to serve as a trademark, a mark must be distinctive -- that is, it must be capable of identifying the source of a particular good (Overview, n,d.). In determining whether a mark is distinctive, the courts group marks into four categories, based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within (Ibid). The grant of a patent creates a series of exclusive rights in an invention, which vest in the proprietor of the patent. Patent is infringed when one of these exclusive rights is exercised by a person without the consent of the proprietor of the patent (Term, n.d.). An invention for the purposes of the Patents Act is an invention, which is defined by the claims set out in the patent. Accordingly, patent infringement takes place when a person exercises any one of the exclusive rights, which falls within the claims without the permission of the proprietor.  As patents may be granted in respect to a product, process or a product produced from a process, whether patent infringement has taken place relies entirely on a proper construction of the claims in the patent in question (Ibid). Applying this in the given case, Messrs Soil can prevent the competitors from using the tompot mark. Further, to prevent the Tom Brothers and Salisbury from marketing the bag with the tompot design, the Messrs Soil should apply for registration of patent over the design of the bag. And that if the competitors should continue marketing the product similar to that of the Messrs Soil they will likely to commit infringement of trademark and patent. A trademark may be regarded as infringed if the trademark holder establishes that the mark of another person or entity creates a likelihood of confusion in the mind of a purchaser, as a result of the use of the identical or similar mark in connection with its goods or services. The Messrs Soil must allege that they have the exclusive right to use the mark in association with the goods or services at issue in a particular geographic or trading area and that they were engaged in prior and continuous use of the use of the mark; and that the mark is valid (Larson 2003). It is not necessary that a trademark be registered in order to commence litigation for infringement. However, a properly registered federal trademark is presumed to be valid (Ibid). If a trademark violation is established in court, the court may issue an order enjoining the infringing party from engaging in any further conduct, which would be likely to cause confusion with the valid trademark. The owner of the valid trademark may also be able to recover money damages associated with the improper use of the mark. Finally, a court may also award to the trademark owner the profits obtained by the infringing party through its improper use of the mark (Ibid). The Messrs Soil can prevent the competitors from using the tompot in action for passing off. Passing off has developed from the common law. The basic difference between an infringement action and an action for passing off is that an infringement action is a statutory remedy and an action for passing off is a common law remedy. Passing off and trademarks law deal with overlapping factual situations. Passing off does not confer monopoly rights (Passing, n.d.). To establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. Whereas in the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient, there should be proof that the use of the mark is likely to deceive or cause confusion. In a passing off action it is also necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff’s goodwill (Ibid). 2. In order to register a mark, an application must be made to the UK Intellectual Property Office, which will examine the application to see whether it satisfies the statutory requirements for registration ( The Basics, n.d).  If those requirements are considered when choosing a mark, and the Trade Marks Register is searched, then a lot of subsequent time and expense can be saved (Ibid). Some basic guidelines for new marks to be registrable: 1) A mark must be distinctive. 2) A mark can be a single word, logo, picture or a mixture of any of these. In fact, it can be anything that can be depicted graphically 3) A mark can be a three-dimensional shape as long as this is not the result of the function of the object or container 4) A mark must not be descriptive SPORTY for sports clothing 5) A mark must not be deceptive SILKY for cotton goods 6) A mark cannot be a common surname or geographical name JONES or LONDON 7) A mark cannot be a national flag, or someone else’s heraldic device, although sometimes parts of such items can be acceptable 8) A mark must not be confusable with any earlier registered mark - that is why the register is searched (Ibid). Information required to file an application must contain the following: a). Full name and address of applicant b) Country and state, (if appropriate), of incorporation of the applicant c). Trade Mark d).A good representation of the logo or design e) Indication of Goods and Services sold or to be sold under the Trade Mark (all goods/services placed in 45 classes). F). Details of application on which Convention Priority is to be claimed (Registering, 2008). To be granted a patent under British law the Messrs Soil must prove that the invention of the tompot bag is "new or that the inventive step is not obvious to an expert in the industry. The Intellectual Property Office explains all inventions granted a patent must be capable of being produced or used in an industrial setting." (Cartmell 2010).       WORK CITED 1. Mark F. Radcliffe and Diane Brinson 1 of DLA Piper LLP (US) Patent, Trademark, and Trade Secret. Available at FindLaw for Legal Professionals Website. [ Accessed on May 19, 2011] website:http://library.findlaw.com/1999/Jan/1/241479.html. 2. TRADEMARK BASICS: STEPS FOR A TRADEMARK. Available at Not Just Patents Legal Services Website. [Accessed on May 19, 2011]. Website: http://stepstoatrademark.com/ 3. Intellectual Property Office: trademark law and practice. Available at Intellectual Property Office Website. [Accessed on May 20, 2011]. Website: http://www.ipo.gov.uk/pro-types/pro-tm/t-law.htm. Intellectual Property Office Website. 4. The Trademarks Law in the UK. (n.d.) Retrieved from website: http://www.ehow.com/list_6700681_trademark-laws-uk.html#ixzz1N2Px5Wfh. [Accessed on May 21, 2011]. 5. Registering a Trademark in the UK. Available at International Law Firm of Pinsent Masons Website.[Accessed on May 21, 2011]. Website: http://www.out-law.com/page-375. 6. The Basics. (n.d). Available at Mewburn Ellis LLP Website. [Accessed on May 21, 2011]. Website: http://www.mewburn.com/Trade_Marks/UK_Trade_Marks.htm 7. Aaron Larson, September 2003. Trademark Law. Available at Aaron Larson Law Office Website. [Accessed on May 20, 2011]. Website :http://www.expertlaw.com/library/intellectual_property/trademark_law.html 8. Passing off and Trademarks Law. Retrieved from website: http://sociologyindex.com/passing_off_and_trade_marks_law.htm. [Accessed on May 21, 2011]. 9. Overview of Trademark Law. Retrieved at Website: http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm. [Accessed on May 17, 2011]. 10. Term: Patent Infringement. Availablet at website: http://www.gillhams.com/dictionary/651.cfm. [Accessed on May 21, 2011]. 11. Paul Cartmell. British Patent Law. Retrieved from website: http://www.ehow.com/facts_6855281_british-patent-law.html. [Accessed on May 21, 2011]. BIBLIOGRAPHY Changes in UK patent law as a result of revised European Patent Convention Implementation. (n.d.) Available at Intellectual Property Office Website. [Accessed on May 21 2011]. Website:http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-law-guidance/p-law-changes.htm Infringement of UK Trademarks By Foreign Websites. (n.d.). Available at Gillhams Solicitors and Lawyers Website. [Accessed on May 22, 2011]. Website: http://www.gillhams.com/articles/409.cfm Infringement: What is Trademark Infringement?. (n.d.). Available at Intellectual Property Office Website. [Accessed on May 22, 2011]. Website: http://www.ipo.gov.uk/types/tm/t-other/t-infringe.htm Paul Gershlick. December 8, 2010. Remedies for Infringement of UK and EU Registered Designs to be harmonized. Available at Matthew Arnold and Baldwin LLP Website. [Accessed on May 22, 2011]. Website: http://www.mablaw.com/2010/12/infringement-uk-eu-registered-designs-ip/ Read More