Trademark

A trademark is a sign to distinguish your won products (or services) from your competitors: it is a distinctive sign. Distinctive is important that it is not descriptive for the products or services offered in combination with your trademark:

Trademarks are:

• A word mark ('philips')
• Figurative design ('windows logo')
• Combined word and design mark
• 3 Dimensional mark (Toblerone shapes)
• Color mark ('yellow pages': must be distinctive through extensive use)
• Sound mark ('a tune')

Do's:

• Avoid the use as a noun, verb or adjective
  • Philishave
  • iPod
  • Readius

Don't:

• Use technical arguments in a trademark

Classification system:

• Does not qualify whether there is a similarity between the good and service or not.

Preconditions and pitfalls

A precondition for protection is a registration of the trademark in the country where the sign is going to be used (first to file principle). The scope of protection:

• Distinctive character
  • Prima facie
  • Through extensive use (proof that it has become a trademark through extensive use)
• Likelihood of confusion
  • Might the public think that the trademarks originate of one and the same or an economic related company
• Mostly for 10 years, infinite renewable.

For Lego there where some pitfalls:

• Results from the nature of the goods themselves
• Is necessary to obtain technical results
• Gives substantial value to the goods

Where / How

A trade mark can be registered

• In the national registers of each country
• In the community trademark register
• Via an international registration

Examples:

• Orange for juice -> Not OK
• Orange for telecom -> OK
• Development4you for an engineering office -> Not OK
• Good call for telecom -> Not OK

Difference trade name and trade mark:

• Distinctiveness
  • Name of a company and (some) distinctiveness
• Scope of protection
  • Nature of the company
  • Geographical spread