Week 9 - Trademarks

Trademark definition

• A sign that serves as a source identifier

  • Distinguishes the good or services of one source from others

Brand equity

• Added commercial value your brand gains from how consumers perceive it rather than from the actual product or service itself

• May pay premium for a brand

• Loyalty to a brand

Trademark protects brand equity

• Trademarks are signifiers of brand equity

• Protects agency’s IP

Law grants proprietors exclusive rights over their trademarks

• You have exclusive rights to use trademarks as source identifiers

  • Use mark to distinguish agency as source of goods and services

  • Can exclude others from using your trademark

A proprietor can transfer rights

• Licensing: can grant permission to others to use your mark

• Can assign rights

Words, names

• Usually protected regardless of typeface, colour etc

• Wordmarks - protectable

  • Whether common word or made up

  • No copyright protection though!

Names of people, groups

• Not generally protected as trademarks

• They can be protected for certain goods or services

  • e.g. BTS for audio recordings and performances etc

Logos

• Likely to have copyright protection

  • BUT they are not a significant factor in most trademark cases

  • Copyright infringement claim can be a backup plan

• Best practice is to register mark as b&w

Trademark-protectable elements: Logos that are stylised text

• Logo can consist of stylised presentation of a wordmark

  • Which likley has insufficient originality for copyright protection

Trademark-protectable elements: Logos with simple shapes

• Logo can consist of:

  • Stylised presentation of a wordmark

  • and/or simple shapes

    • Lacks originality for copyright protection

Trademark-protectable elements: Logos with art

• Logo can consist of:

  • Stylised presentation of a wordmark

  • and/or conceptually separable art

    • Very likely to be copyright-protected

Phrases

• Can be trademarked

• Lacks copyright protection

Sound marks: Sound effects

• Apple (sound at startup of Mac), HBO (static + chord), Microsoft Windows (startup sound), Netflix (“ta-dum”)…

• …and for MGM Studios: Leo the Lion’s roar

Sound marks: Music

• Advertising jingles

  • Mcdonald’s ba da ba ba ba

• Short melodies

Scents

• Must serve as source identifier

• So scent cannot be an inherent aspect of products in thta category

Distinctiveness required for protection

• Distinctiveness:

  • Mark’s ability to identify its source for avg consumer, because of:

    • Inherent distinctiveness

      • ability to distinguish source even without a history of prior usage

    • and/or acquired distinctiveness

      • from source’s use of mark in the market

Generic mark

• Word is the name/descriptor of category of goods or services

• No distinctiveness

• No one owns such a mark

• e.g. laptop, vegetarian foos

Fanciful mark

• Term has no prior meaning; was inventied or “coined” for use as a trademark

• Inherently distinctive because:

  • Capable of distinguishing brand becuase it has no other competing meaning

Arbitrary mark

• Word has meaning, but in different context

• Arbitrary for product/service

• Substantial ingerent distinctiveness

Suggestive mark

• Word meaningful in context of goods services

• Not literally descriptive

  • Imagination required to associate mark with product

  • Some inherent distinctiveness

Descriptive mark

• Word directly descibes a quality. feature, function etc

• No inherent distinctiveness

• E.f.

  • Merely descriptive words: fresh fruits

  • Laudatory words : best cleaners

  • Geographical place names

  • Common names for persons

Descriptive mark can acquire distinctiveness

• May have acquired distinctiveness through use in the market

  • Do consumers recognise it as source identifier?

  • Owner’s efforts to promote it?

• Can be recognised as yours or registered only if it has acquired distinctiveness/secondary meaning

“Genericide”: A mark loses distinctiveness

e.g. Theromos can’t stop others from using the term cause it has lost its distinctiveness

• Loses ability to identify the source of goods for average consumer

• If validity of mark is challenged, trademark office can cancel registration

Distinctiveness is required for legal protection of a mark

• Trademark officers won’t grant registration without proof of distinctiveness

• Threshold hard to point, but safe to say:

  • Some acquired distinctiveness from use in market or some inherent distinctiveness

  • Level of distinctiveness of suggestive mark is minimum for protection in absense of evidence of acquired distinctiveness

Trademark registration benefits

• 10 years term

• Indefinite renewals

• Successful registration based on trademark office’s investigation of whether you:

  • Have a valid trademark

  • Are the owner

Trademark notice

• TM: can be used before applying for registration or after apple but before registration is granted

• ®: can be used only after registration granted

Registration can be revoked

• Revoked usually after another part challenges your registration because they want to use it

  • e.g. name too generic, deemed a descriptive mark etc

Abandoned mark

• TM can be deemed abandoned and revoked:

  • If register before you use a mark

    • Declare bona fide intent to use

    • Not used in required time (5 years in SG)

  • Granted registration but have not used mark in 5 years

Madrid protocol

• Treaty that allows trademark onwners to register their marks

  • In multiple countries

  • Through a single application

How it works: If you want US protection:

• File base application in SG via IPOS

• In same application, designate US

• US TM office examines mark based on US law and grants/denies registration

• You manage all registrations through WIPO - no need to deal separately w US

TM Infringement (type)

• Mostly civil

  • Infringement or dilution

  • Passing off

• Can be criminal

  • Making, selling, importing counterfeit goods

Possible remedies it trademark cases

• Injunction

• D pay P

  • Damages

  • Profits made

  • D’s legal cost

Opposing applications for registration

• During opposition period: opponent files notice of opposition

• Logic: if the party uses the trademark, it will infringe the opponent’s mark

• Then trademark office tribunal approves/rejects application

• Either party can appeal to a court

Infringement actions: Commonalities

• Unauthorised use of a trademark

• Strict liability

  • No mental state requirement

  • Evidence of mental state can aggravate damages

Infringement 1.0: Traditional (US)

• Plaintiff proves: Confusion likely for avg consumer, cause D both:

  • Used the mark that is similar to P’s

  • Used it on similar goods/services

Infringement 2.0: In Singapore, not US

• P proves: Confusion likely for average consumer because D:

  • Used mark that is similar to P’s

  • Used it on similar goods/services:

    • Similarity required for marks that are lesser known

    • Similarity not required for marks “well known” to the public in SG

Reasonable person tests in trademark law

1. Whether mark is well known

2. Likelihood of confusion

3. Similarity of:

   • Marks

   • Goods, services

Well known aka famous marks

• Based on consumer recognition among the public

• Can consider duration, evidence of advertising, market share

• Mark can be well known in a jurisdiction but not globally

• No list

Likely confustion

• Consumer surveys to test

• Average (reasonable) consumer

  • Not moron in a hurry

  • Not exceptionally careful

Similarity of marks based on:

• Visual

• Aural

• Conceptual

Similarity of good/services—consider:

• Classes which TM are registered

• Price and target market

Dilution: 2 kinds

• Weaken distinctivenness - dilution by blurring

• Tarnish the well-known mark - tarnishment

Dilution

• Strict liability

  • No mental state

  • Plaintiff-friendly - low burden of proof

• No registration required for well-known marks in SG

Subtype of dilution: Tarnishment

• No confusion required

• Similar mark has “inappropriate or unflattering associations”

Protectable elements: Trade dress

• For elements of design/packaging to have protection, must both be:

  • NOT purely functional

  • Capable of serving as source identifiers - distinguish the source

• Can include:

  • Marks like shape, colour, scent

  • Aspects of apps, websites, stores