FIVE THINGS YOU NEED TO KNOW ABOUT TRADEMARKS
1. IT’S ALL IN THE NAME
The best Trademarks are those which are inherently distinctive.
Examples of inherently distinctive marks would be where the mark is an invented word applied to goods or services such as “XEROX” for photocopiers, or words that already exist but are then applied to goods or services outside of their normal context, “APPLE” for computers is an often cited example of this.
A mark which simply describes the goods or some particular attributes of the goods will not be registrable. This means that attempting to register the word “TABLE” to cover tables would be refused. It is also strongly advised to refrain from using generic terms, “DECAF” in relation to decaffeinated coffee would be a very weak trade mark, even if it were accepted for registration.
2. USE IT OR LOSE IT
There is a use requirement for a Trademark. Once a mark is registered the proprietor is obliged to use the mark in relation to goods / services for which the Mark is registered. A failure to do so can result in the removal of the mark from the Trade Marks register. This procedure is referred to as cancellation proceedings.
Cancellation can be effected by the Registrar or on the application of a third party.
To obtain cancellation of a mark there must be no bona fide use of the mark for a continuous period of at least five years from the date of issuance of the certificate of registration.
3. FOREIGN PROTECTION
A Trademark registration is specific to the country in which it is obtained.
This means that a trademark must be registered in each country in which the owner seeks protection. In order to reduce the costs of multiple registrations there is a system of international registration for trademark similar to the PCT system for Patents. One application is filed designating a number of countries where the applicant wishes for the mark to be registered.
The Madrid Protocol is administered by World Intellectual Property Organisation (WIPO).
Currently there are ninety-eight (98) contracting parties covering one hundred and fourteen countries (114). Obviously not every country is a member of the Protocol. For example, Nigeria, South Africa and Angola are not currently members. Therefore, if you are desirous of obtaining trade mark protection in any country which is not a member of the Madrid Protocol you will have to apply for protection in that country directly.
4. IT’S YOURS TO SELL
The owner of a trademark, referred to as the registered proprietor, has exclusive rights to the use of the trademark which it has obtained. Those rights include, the right to sell the trade mark to a third party. It is usually a requirement that the sale of the Trademark be notified to the Trade Marks registry. This is so that the details of the new registered proprietor can be entered on the Register. To do this there is a recordal of the Assignment of the Trademark. Once the assignment is effected a recordal certificate is issued in favour of the new owner. All subsequent renewal certificates will be issued in the name of the new registered proprietor.
5. WHOSE JOB IS IT ANYWAY?
It is true that the registration of a Trademark offers protection from the infringement of the mark, unauthorised use and counterfeiting.
However, the Police or Customs authority will normally only act to stop infringement of a trade mark based on reports made to it by the registered proprietor or an agent acting on its behalf. This means that the policing of the trademark lies mainly with the owner of the mark.
It is advisable that owners of trademarks put into place systems for watching their mark. These systems can be extremely costly for a trademark owner but the expense might pale in comparison to the potential loss of revenue or the dilution of the trade mark occasioned by infringement by third parties.