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Registered Trademark Rights and Trademark Use
Registered Trademark Rights
In terms of the UK Trade Marks Act the proprietor of a registered trademark
is given exclusive rights in the trademark which are infringed by use
of the trademark in the UK without his consent. It is important to note
that there are certain defences to trademark infringement (or limits on
the effect of registered trademarks) which need to be borne in mind.
Trademark Use (Trade Mark Use)
In order to maintain registered trademark rights it is important that
the trademark be put to genuine use in the territory in which it is registered.
Failure to use the trademark for a period of five years from the date
of registration (i.e. completion date and not the filing date) or for
an uninterrupted period of five years, provided there are no proper reasons
for non-use, may results in the trademark being revoked. To this end it
is important to realise that non-use for a five year period does not results
in automatic revocation. In order to be revoked an application for revocation
must be instituted by a third party – non-use for five years is
merely one of the grounds on which this can be done. Failure to use a
trade mark for five years therefore places the trade mark rights at risk.
Use must be genuine. In a recent European Court of Justice decision (La
Mer Technology Inc v Laboratoires Goemar SA) the court considered the
meaning of genuine use and concluded that it does not include token use
for the sole purpose of conserving rights. There is genuine trademark
use where it is used in accordance with its essential function, which
is to guarantee the identity of the origin of the goods or services for
which it is registered. Use that serves a real purpose is regarded as
being genuine use and even minimal use of a trade mark or use by only
a single importer in a Member state can be sufficient. Quality and purpose
therefore appear to be the key criteria.
The key to proper trademark use (and therefore
maintenance) lies in the source identification function of trademarks.
It is important to remember that trademarks identify the source or origin
of products and services and are thus capable of distinguishing the goods
or services of one undertaking from those of another. If, and when, a
trademark no longer performs this function, it ceases to be a mark and
becomes a generic term. Generic terms designate a type of product or service,
without calling to mind any specific manufacturer or provider.
Generic terms are in the public domain, and may be used freely by anyone.
They cannot, as a result, form that subject of a monopoly. The terms,
"escalator," "aspirin," "yo-yo," “Walkman,”and
"trampoline," all began life as trademarks. However, through
lack of proper use, and/or enforcement, these marks became generic. Today,
any company may use them to describe certain types of products.
What can be done to protect a mark and prevent it becoming generic or
a commonly used term in the relevant trade?
• If possible a trademark should always be indicated as such using
the ® symbol for registered trademarks and the ™ symbol if the
trademark is unregistered. A trademark acknowledgement should always be
included in advertising, promotional materials and on packaging.
• Trademarks are adjectives, and should be used only as such. Never
use trademarks as nouns or verbs. One way to ensure that a mark is used
in proper adjectival context, is to follow each use with the generic noun
for the product identified. For example refer to the product as ROLLERBLADE
in-line skates instead of ROLLERBLADES. It is also important not to pluralise
trademarks.
• Link the trademark with the generic name of the product for to
encourage customers to adopt the usage desired by the trademark proprietor.
Using the trem ‘brand’ after the trademark could be useful.
For example SCOTCH brand adhesive tape is better than SCOTCH tape.
• Give prominence to the trademark by using it in capital letters/colour
or stylised letters. This ensures that the trademark is used in a distinctive
manner.
• Trademark owners should ensure that all third parties, for example
licensees, also use the mark correctly. Authorised third-party users of
a trademark should be licensed, and all licensing agreements should be
written carefully, signed, and enforced. The agreement must set standards
concerning the licensee's use of the trademark, and the quality of products
or services with which the trademark will be used.
• Affix your trademark to goods or services. In order for trademark
rights to be created and maintained, a mark must be affixed to a specific
product, or used in the provision of a particular service. Marks cannot
discharge their source-identifying duties, if they cannot be seen on products,
or with services.
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