The registering of a trademark (TM) in a particular country will mean that the trademark will be protected exclusively by the law of the country where it was registered. An alternative is trademark registration under the Madrid system. This system greatly simplifies and speeds up the registration of TM internationally.
The Madrid system operates in accordance with the Madrid Agreement and the Protocol of the Madrid Agreement. The Madrid system includes 104 members, representing 120 countries. If you need to register your trademark internationally, please contact one of our trade mark lawyers or agents, who will find a cost-effective and expedient solution for registering your trademark in strict compliance with the Madrid System.
IQ Decision UK’s trademark lawyers are experienced in successfully supporting clients worldwide, by searching for already existing trademarks as well as professionally managing the international registration and subsequent lifecycle of your trademark including its renewal.
Trademark as part of a brand
Currently, there is no consensus as to the definition of what constitutes the essence of a brand. Put most simply a brand is a unique combination of signs, designs, words, and symbols used to identify a product and distinguish it from its competitors.
The versatility of the brand concept means that everyone has their own interpretation when considering this issue. Confusion in terminology arises in the group of concepts: property mark, trade logo, trademark, and brand. Further complicating the understanding of this issue is the fact that recently not only goods, but also people, territories, etc. have become classified as a brand. However, a more detailed consideration of this issue allows building a chain of interconnections where the brand is the final link.
From a historical point of view, the first concept of ownership was the property mark. In the process of gradual transformation of the mark as a symbol of owning a property – family crest, patrimonial coat of arms, emblem, etc. – into a brand, its essence changed. The property mark is the starting point for the formation of a trade logo, trademark, and later on a brand.
Nowadays, lawyers define a “trademark” as “a name, term, sign, symbol, drawing, or combination thereof, intended to identify goods or services of a single seller or group of sellers and differentiate them from the goods and services of competitors”. An important component of this definition is the fact that a trademark is used only when more than one product of the equivalent type appears on the market, that is, when competition begins. Otherwise, the trademark is not needed, as there is no need to choose from similar products. This is the first function of the trademark. From the same definition follows the second function – the identification or association of the product with its manufacturer. This particular definition of a trademark is considered fundamental or classic.
A trademark includes several elements: mark name, mark sign (logo) and registration. A mark name is a part of a mark in the form of letters that can be spoken; a mark sign is a part of a mark that is visually recognizable; the registration of a trademark provides legal protection of the brand.
The combination of the distinct elements of the mark reflects the essence of the concept itself, allowing it to be distinguished from other marks and determining the characteristics of the product. The need to use each particular element or their combination is determined by the general characteristics of the market. In today’s modern market conditions, it will not be enough for the producers to use only the name, logo and legal protection as a trademark.
It has been common to consider a trademark as “a name, mark or symbol (or a combination of them) that identifies the products and services of a seller or group of sellers.” This interpretation pinpoints only one of the functions of the trademark: identification or association of the product with its manufacturer.
It should be noted that an important component of the mark has been omitted in the aforementioned, namely the differentiation from competitors, which narrows the understanding of the essence of the trademark. The most common definition of a trademark no longer consists of three elements, but four: a mark name, mark logo, trade image, and trademark. Thus, a mark has now incorporated trade image in order for it to become a “personalized trade mark” with image as a means of individualization of the manufacturer and also the product.
Registration of a trademark occurs in public institutions, and the registration itself protects the rights of the manufacturer (seller) to use the mark or logo.
Trademark legal protection is currently carried out in more than 160 countries, with more than 90 of these countries securing it at the legislative level.
From the point of view of production and commercial activities, the trademark indicates who has the exclusive right to a particular product and thus to generate profit from its use in addition to being a special symbol of responsibility for product quality. As long as the manufacturer meets this responsibility the trademark brings the owner a tangible benefit, ensuring his high reputation in the market.
It should be noted that the trademark is a part of the corporate identity. In turn, corporate identity is a set of methods that ensure the perception of the image of the company and its products in the world and at the same time allows differentiating it from competitors.
By attracting and retaining consumers, successful brands ensure the prosperity of the company. Having won the attention of regular customers, the company is given the opportunity to strengthen its position in the market and maintain the level of affordable prices and stable cash flows, which in turn increases the price of the company’s shares and provides the basis for its further growth.
Branding is not just for the consumer market, it is also extremely important for any business, any market and any retail or service provider.
Since an increasing number of countries have created a system for the protection of inventions and trademarks, there is a need to harmonize legislation on industrial property rights at the international level. Since the end of the 19th century, a number of international agreements had been signed in the field of industrial property protection. The most important of them are the Paris Convention for the Protection of Industrial Property of 1883 and the Madrid Agreement Concerning the International Registration of Marks of 1891.
The main function of a trademark is to affirm the high quality of the product being sold, ensure customer confidence, display the good reputation of the trademark owner (who is not necessarily the manufacturer of the product), and product quality control.
The main functions of the trademark are as follows:
- Individualization of the goods;
- Indication of the origin of the goods;
- Indication of the quality of the goods;
Legal protection of trademarks
The subjects of the right to trademarks may be legal entities or individuals engaged in business or social activities.
Trademark rights are acquired and protected in the territory of each state by:
- Registration in accordance with the provisions of the applicable national law;
- International registration under the Madrid Agreement Concerning the International Registration of Marks of 1891 and the Protocol to the Madrid Agreement Concerning the International Registration of Marks of 1989;
- Recognition of famous trademarks.
The right to use a trademark is protected by applicable law, according to which no one has the right to use a state protected trademark without the permission of its owner. The owner of the trademark has the exclusive right to dispose of the sign / symbol or to prohibit its use by other persons.
The protection of exclusive rights of individualization is carried out in accordance with the Paris Convention for the Protection of Industrial Property. In accordance with the Convention, any product illegally marked with a trademark or trade name is subject to seizure when imported into countries where the mark or name is subject to judicial protection. The arrest is carried out in the country where the illegal labeling took place, or in the countries to which the product was imported.
The arrest is carried out in accordance with the domestic legislation of each country at the request of the prosecutor’s office or any other competent authority, as well as at the request of the aggrieved party after judicial authorization.
The signatories of the Paris Convention committed themselves to protecting trademarks in their national legislation.
Use of the trademark
The use of a trademark is an absolute and subjective exclusive right. It means that only the owner has the exclusive right to use the trade mark and dispose of it, and to prohibit the use of trademarks by others. No one may use a protected trademark without the permission of the trademark owner.
The trademark right is limited to:
- List of goods specified in the registration certificate;
- The name of the state in which the mark was registered;
- The period for which the trademark was registered.
In order to protect the rights of owners of trademarks and consumer interests in each state, certain laws were passed recognizing the right of the owner to put a warning label next to the trademark, indicating that the adopted symbol is a trademark registered in the particular state.
The warning label is a special designation in the form of a Latin letter “R” enclosed in a circle, warning that the trademark is protected and the consumer buys the goods of this particular manufacturer.
Transfer of rights to the trademark
The transfer of rights may be carried out on the basis of a contract of assignment of rights (full transfer) or a license agreement (partial transfer), as well as through legal inheritance.
The assignment of a trademark (i.e. sale) means the transfer of the trademark by its owner to another individual or legal entity in respect of part or all of the goods for which it is registered. However, alienation is not allowed if this can mislead the consumer about the product or its manufacturer.
If you need the advice of a professional on registration of a trademark and transferring your trademark rights, please contact IQ Decision UK to schedule an appointment with one of our trademark attorneys.
In addition to the contract of assignment, the rights of the owner of the trademark (licensor) to use the trademark may be granted to another person (licensee) under a license agreement.
Unlike a trademark assignment agreement, a license agreement gives the licensee the right to use the trademark for a specified period in accordance with the contract.
Illegal use of a trademark or similar trademark designation, similar or identical to a previously registered trademark in relation to identical and homogeneous goods or services that mislead the consumer regarding the product or its manufacturer is a violation of the exclusive right of the owner of a previously registered trademark. The similarity between a registered trademark and similar labeling leads customers to incorrect conclusions about the brands that have minor differences. It should be noted that often the quality of the goods produced in violation of the rights of the owner of the trademark is significantly different from the original product.
A serious violation of the rights of the owner of a trademark is the use without the permission of the owner in civil circulation of a trademark or similarly confusing designation with respect to goods for which the trademark was individualized.
All goods labeled with unauthorized TM designations are considered counterfeit goods that have penetrated the market illegally. Such violations are punishable through administrative penalties and damages in the form of lost revenues.
Most often, the company’s activity is unique to the country in which it is located. In the case of commercial expansion, a company is not only obliged to register a trademark accordingly in its own country, but also to register the same trademark on an international scale.
To summarize, currently, there are two options for ensuring the legal protection of a trademark in several countries. International trademarks may be registered in accordance with national procedure or under the Madrid Agreement.
You can file an application for trademark registration with the patent office of each country, but this will require significant material costs, since it will be necessary to translate all documents and pay for the services of registered patent attorneys in these countries. In addition, registration can take a long time. For example, a trademark registration in Germany may take up to three years.
To simplify and speed up the process of the international registration of a trademark (TM), you can use the Madrid system to register a trademark.
The Madrid System allows for the international registration of a trademark in several member countries of the Madrid Agreement and / or its Protocol.
In accordance with legal regulations, an international application for registration of a trademark can be filed only by the competent national trademark bureau at the WIPO IB (International Bureau of the World Intellectual Property Organization), through a national authority authorized to conduct state registration of trademarks.
If you want to register your trademark with the national agency that administers rules and laws relating to trademarks, patents, registered designs and intellectual property rights, or if you need a legal support and advice on how to register your trademark globally in accordance with the Madrid system for the international registration of marks, the United State Patent and Trademark Office (USPTO) rules, the Intellectual Property Office (UK-IPO) procedures in the UK or the Japan Patent Office processes, our trademark attorneys at IQ Decision UK will devise an efficient filing strategy for your trademark application, depending on the jurisdiction and keep you updated on the status of your trademark application before sending you the completed trademark registration certificate.