Often we hear the term Trade mark used in conversations, books and on television but how many of us actually know and understand what a trade mark is?
A trade mark, by legal definition, is a distinctive symbol or image, word or words legally registered or established by use as representing a company or product. In short, it is the mark, by which a company or entity and its products are known.
As individuals, in our circle of friends we often have unique features that garner us nicknames such as “Bigga”, “Shorty” or “Slim”. Whatever the nickname, when one person in the circle refers to another by that moniker, everyone in the circle is aware of whom the reference is being made.
This is the concept behind a trade mark. It is the feature by which customers, competitors, and the general public can recognize and distinguish one company from another. In essence, a trade mark is a company’s identity in the community in which it does business.
However, a trade mark is more than an identity. A trade mark is a form of intellectual property and as such, the owner is entitled to certain inherent property rights. These rights include: the right to control the use of the trade mark; the right to benefit from the trade mark; the right to transfer or sell the trade mark and the right to exclude others from using the trade mark.
As with any other form of property, the trade mark holder may use his mark as he sees fit, subject to the provisions of the Trade Marks Act, and take steps to protect his rights from being infringed.
Using a Trade mark
Trade marks may be used for many purposes but, typically, the primary purpose is to identify the trade mark holder’s business, products and/or services and to distinguish them from the competition. A business may use a trade mark to identify its product to the consumer as having been made by that business.
Businesses should ensure that their trade mark is easily identified so that others wishing to use a similar trade mark will realize that it is not available for use. While Jamaican law does not specify a method by which trade marks may be identified, businesses may opt to identify their marks by using the following internationally recognized symbols:
® – to indicate a registered trade mark Tm – to indicate a common-law or unregistered trade mark Sm – to indicate a common-law or unregistered service mark
A trade mark may also be used to obtain profit for the trade mark holder. The trade mark holder (licensor) may license his trade mark to another entity (licensee). That is, the holder may allow a third party to use his mark in exchange for monetary compensation. Where a trade mark holder agrees to license his mark he should ensure there are provisions for quality controls. These provisions ensure that the product offered by the licensee is of the same standard and quality as that of the trade mark holder. Failure to sufficiently monitor the quality of the goods provided by the licensee could result in a tarnishing of the mark.
Rights in a trade mark arise from usage of that mark and can be extinguished by lack of use. Where a trade mark holder does not use a mark for a period of three years, the mark can revoked by a third party on the ground of non-use. Accordingly, a trade mark holder should exercise stringent management and control of his trade mark. Rigid control can also help to limit counterfeiting by unfair competitors who would otherwise use the mark to promote their inferior products as those of the trade mark holder.
Protecting a Trade mark
Businesses, just as individuals, have and need to protect their identity. When two or more companies use the same or similar trade marks, confusion occurs in the market. Customers intending to patronize Company A may inadvertently patronize Company B. This not only results in revenue loss for Company A, but if Company B’s products and services are sub par, it could also cost Company A their reputation and hard-earned goodwill.
Identity theft does not just occur amongst individuals. Often, Company B will intentionally use Company A’s trade mark to profit from Company A’s goodwill. Again, this results in revenue loss for Company A and possibly, a loss of customers.
Trade marks can be either registered or unregistered. A mark registered with the Jamaica Intellectual Property Office provides protection by entitling the registrant to exclusive use and control of that mark in Jamaica. The owner of a registered mark can commence an action in a court of law to prevent the unauthorized use of that mark.
An unregistered mark, also known as a common law mark, has similar rights. Unlike a registered trade mark that is protected without proof of goodwill, an unregistered mark may only be protected in the geographical area in which it is known and thereby acquired goodwill. Additionally, in order to enforce the protection of an unregistered trade mark in a court of law, the claimant will have to commence an action for the tort of ‘passing off’ against the offender. To further complicate matters, the claimant will have to prove that 1) they had goodwill in the mark, 2) that there was a misrepresentation by the offender and 3) that as a result, the Claimant suffered damage to his goodwill.
It is important to note that not every mark can be registered. Generic terms are not able to distinguish the products and services of a business from the products or services of another business and therefore cannot be protected.
Trade mark law can be a very confusing area. It can be difficult for businesses to determine what constitutes a mark, whether a mark can be registered or what to do when a mark has been infringed. In order to ensure they have the most accurate and current information businesses seeking to manage their trade mark portfolio should seek the services of experienced trade mark counsel.
Damion Blair
Attorney-at-Law
DunnCox
48 Duke Street, Kingston
damion.blair@dunncox.com