Introduction
Intellectual property is a term that is used to refer to inventions, literary as well as artistic works. Further on intellectual property can be used to make reference to symbols, names as well as images that are used in commerce. Intellectual property can be classified as industrial property when dealing with inventions; trademarks and industrial designs or copyright when dealing with literary works such as novels, poems, films, play or music (Halbert 2005). Intellectual property rights have a provision that allows the creators and owners of patents to benefit from their works. With the granting of a patent the owner of an invention is able to enjoy protection of their inventions and benefit from the same for a limited period of time; usually 20 years in most of the cases.
Trademarks
A trademark is a distinct sign that is used to identify a certain good or service that is a product of an individual company. Trademarks have a long history and have evolved into the current system whereby they are registered and protected; with the use of trademarks, consumers are in a position to identify and purchase goods and services based on their unique distinctive characteristics as represented by their trademarks (Winner & Aaron 2004). A trademark that is registered is protected under the law and the owners of these trademarks have exclusive rights to the use of these trademarks either to identify their goods and services or to sell the trademarks. There is a distinctive period over which a trademark enjoys protection and the registration is renewable; the registration of trademarks also protects the owners from infringement and counterfeits.
In case there is a suspicion of an infringement of a trademark, there is a law that is used to address the same; the following case scenarios will be used to represent various cases in relation to trademark infringement and advice the affected parties on the best way forward under the provisions of the trademarks Act of 1994.
A pyramid shape for chocolate mints, “pointymints”. You note that the pyramid Shape is similar in some ways to a well known brand of triangular chocolate “Toblerone”
This scenario can be taken as a situation whereby the trademark rights of “Toblerone” have been infringed upon by “pointymints” and this is what needs to be established beyond reasonable doubt.
Under the Trademark Act in the classification of Goods and Services under the Trademark Act; the international classification of goods and services for this case puts the products under dispute here as goods, class 30 given the fact that chocolates are products of cocoa. In this case it is important to try and establish whether there are substantive grounds on which the trademark rights for “Toblerone” had been infringed upon. It is important to note that under the basic requirements for registration, the trademark does have a distinctive graphical representation and on that basis, it does qualify for registration (Glick, Lara & Richard 2003). However it is also important to note that there is an absolute ground for refusal of registration if the trademark for the goods is seen as being similar to a trademark used for goods of the same kind.
In this case the trademark for “Toblerone” is triangular; here come “pointymints” with a trademark that is pyramid in shape. The distinctive factor here is that a pyramid in so many ways does resemble a triangle; the major distinction being that whereas a triangle is one dimensional, a pyramid is 3 dimensional. However the big issue lies in the fact that both trademarks ought to be used to identify goods of the same type ‘chocolate mints’. It is on this basis that the management of “Toblerone” can dispute the registration of the pyramid shape as a trademark for “pointymints”; the customers can easily confuse these two trademarks and end up buying the product which they did not wish to buy (Glick, Lara & Richard 2003). Therefore there are very pertinent legal issues that need to be addressed in relation to the trademark Act of 1994, under whose provisions, the mark cannot be registered in its present form. It is very clear that a registration of the pyramid shape as a trademark for “poinymints” will infringe on the trademark rights for the triangular shape that is used by “Toblerone” for their chocolate mints. Under the partnership Act of 1994 therefore “pointymints” cannot register their pyramid shaped trademark.
A name, “Oxford”, for bicycles which is a well established unregistered recognized as a leader in its field of quality bicycles for the last twenty years
In this case the bicycles under consideration can be classified as goods because they easily fall under class 12 in the international classification of goods and services. The class 12 includes vehicles and all apparatus for locomotion either via land, air and water. First and foremost it is important to note that a name does not qualify for registration as a trademark unless it can be represented graphically. Here we assume that the name Oxford has been represented graphically for the purposes of registration.
This case presents a very interesting scenario which needs to be clearly analyzed using the provisions of the Trademark Act of 1994; the Oxford trademark under contention is a well known name which has been associated with a quality brand of bicycles over a very long time. In this case the name meets the basic requirements concerning the registration of a trademark in relation to the graphical representation and the presence of distinct features can be registered under the provisions of the Trademark Act of 1994. However this will be subject to the party that represents the trademark for the purpose of registration.
It is also important to note that the use of the name ‘Oxford’ as a trademark for quality bicycles can only be regarded as being acceptable if its registration is sought by the company which has been producing the bicycles. In view of this it is important to note that if an application for the registration of the trademark is made by any other organization then there exists substantive ground for refusal of registration. This is because it gives them an undue advantage in the market (Poltorak & Paul 2002).
Although the name Oxford might not be registered in relation to the bicycles in question, most of the customers already recognize the name and they relate it to the quality bicycles that have been in the market for the past twenty years. In relation to this there exists an absolute ground for refusal in that the registration of this trademark by another organization will end up giving it an undue advantage in the market. There are even some ethical issues that exist in relation to this trademark; the people have for a long period of time associated this trademark with quality and therefore if its introduced into the market on another product this means that there is a great possibility of the people confusing the new product with the old ones. This will cause confusion for these customers who might be ultimately deceived to buy these bicycles thinking that they are the old Oxford bicycles that were known to be of a high quality.
There are legal issues that need to be addressed in this case and the owners of the previous bicycles can raise an objection to the registration of this trademark by any other organization. However if it’s the original owners of the trademark who want to register it then there are provisions that allow them to register it since it is already synonymous with their products (Elias & Richard 2003). It is also important to note that the new organization can also register the trademark if they can be able to reach an agreement with the producers of the Oxford Bicycle or if they are dealing with goods that are not related to bicycles.
The smell of “Desire” perfume, which is described by experts as “Vanilla with a hint of spice”
Since this is a characteristic of the product we conclude that it is not possible to register it as a trademark under the Trademark Act of 1994. This is unless some of the requirements as outlined below are met.
Here for the purposes of classification we deal with the product that is associated with the smell and in this case under the international classification of goods and services, we can categorize the perfumes as a good under class 3 of goods as described under the trademarks Act of 1994. However here is a unique case which is a representation of a characteristic for registration as a trademark; in this case however, it is important to consider if this can qualify for registration as a trademark. Under the trademark Act of 1994, a characteristic or quality on its own constitutes enough grounds for refusal of registration for a trademark (Elias & Richard 2003). A trademark should not be a representation of a quality or a characteristic of a good and therefore in this case, unless the trademark being presented for registration has been structured so as to incorporate several aspects in relation to the perfume, then there exists absolute ground for refusal of registration.
In the case of the smell of desire perfume, the exact clause which acts as a ground for refusal of registration is that if the trademark is made as a representation of the smell which is described by the manufacturers of the perfume as “Vanilla with a hint of spice”, then definitely this will mean that the trademark consists of signs or symbols which describe the qualities or features of the goods. Under this consideration therefore, the trademark developed can be denied registration under the trademarks Act (Moore 2004). However it is also crucial to note that this problem can be overcome by incorporating other symbols that are in relation to the trademark within the trademark; in this case the trademark will not consist solely of symbols that define the characteristics or qualities of the good and therefore there can be consideration for registration (Alikhan & Raghunath 2004).
Therefore, in order to effectively overcome the legal hurdles that are presented in the course of the registration of a trademark that incorporates the distinct characteristic of a good, it is very important to ensure that the symbol of the trademark does not solely constitute the qualities or characteristics being represented by the manufacturers. Under this consideration, other symbols maybe included in the trademark and thus the trademark can qualify for registration.
An unusual shade of metallic purple used as wrapping paper for mints produced by Rawntree Ltd
In this case under the partnership Act of 1994, it is not possible to register a trademark that comprises solely the features of the goods to be registered. Therefore, a trademark which consists solely of the unusual shade of metallic used as a wrapping paper does not qualify for registration as a trademark. Here the product under consideration is a mint and can therefore be classified as a good under the international classification of goods and services under class 30. In this case the unusual shade of metallic purple is a unique characteristic that is associated with the wrapping for the mints produced by Rawntree Ltd. In this case therefore it is necessary to consider if this is used solely as the characteristic that is associated with the trademark, will it give a hint as to the quality of the mints themselves. If this is the case then there surely exist enough grounds for an absolute refusal for registration for such a trademark (Cook 2002).
It is therefore very important to avoid any issues that may present any legal grounds for the absolute refusal of registration for such a trademark. It is important to ensure that the trademark is all inclusive of symbols representing other attributes in relation to the goods other than the qualities, characteristics and features for the goods.
Conclusion
The registration, use and ownership of trademarks are the most important aspects under the intellectual property law. A trademark should be distinctive in nature and should not include any symbols that may serve as grounds for absolute refusal for registration; the scenarios given present real cases whereby controversy might exist in relation to the qualification of the trademarks for registration (Winner & Aaron 2004). In some cases registration under the current form, is not possible; if all the factors are clearly addressed however as indicated in each case, then it is possible to make sure that no legal issues arise in relation to the registration of the trademarks for the various goods and services.
Reference List
Alikhan, S & Raghunath, M 2004, Intellectual Property and Competitive Strategies in the 21st Century The Hague, Kluwer Law International, New York.
Cook, C. W 2002, Patents, Profits and Power: How Intellectual Property Rules the Global Economy, Kogan Page, London.
Elias, S & Richard, S 2003, Patent, Copyright, and Trademark, Nolo Press, Berkeley, California.
Glick, M, Lara A, & Richard, H. 2003, Intellectual Property Damages: Guidelines and Analysis, John Wiley, Hoboken, New Jersey.
Halbert, D 2005, Resisting Intellectual Property Law, Routledge, New York.
Moore, A 2004, Intellectual Property and Information Control: Philosophic Foundations and Contemporary Issues, Transaction, New Brunswick, New Jersey.
Poltorak, A & Paul, L 2002, Essentials of Intellectual Property, John Wiley & Sons, New York.
Winner, E & Aaron, W (eds) 2004, International Trademark Treaties With Commentary, Oceana, Dobbs Ferry, New York.