The Elements of a Trademark

1.0 Introduction Intellectual property is what the mind creates. Through imagination in the mind, one creates literary and artistic works. The mind creates names, symbols, and images. There are inventions and designs, which are all part of intellectual property. The three main types of intellectual property are patents, copyright and trademarks. Patent is the exclusive right to market invention; whereas, copyright is the exclusive right to the author of the original work of the authorship. Trademark is the name, word, device, or symbol that is use in trade to show and to differentiate the goods (Mart, 2015). Intellectual property is protected by law, to have an environment, which innovation and creativity can flourish (WIPO, 2015). 2.0 Elements of Trademark Requirements to be A Trademark A trademark must be used in trade. The trademark law is use to regulate interstate trade. According to the Lanham Act, a trademark is a mark used in trade. The exclusive rights of a trademark are given to the first person who uses it in trade. Besides that, a trademark must be different from others. It is an identity to distinguish specific goods from one another. There are four categories of distinctiveness.

  • The arbitrary/fanciful or suggestive category is considered to be inherently distinctive. The mark’s exclusive rights are determined by priority of use.
  • The descriptive category is protected only if it has the secondary meaning in the minds of the public. The secondary meaning is needed to set up a trademark protection for a geographic term or a personal name.
  • The generic category, they will never be eligible for trademark protection. Rather than indicating a unique source, they refer to a general class of products (Cornell, 2015).

Trademark Infringement Firstly, to succeed on a claim of trademark infringement, the plaintiff must initiate that he/she has a valid mark qualified to protection and that the defendant used the similar or a same mark in commerce in connection with the sale or advertising of goods and services without plaintiff’s agreement. Moreover, the plaintiff must prove that defendant’s use of the mark is going to cause confusion as to the connection, affiliation or association of the defendant with the plaintiff. Thus, there are three distinct elements necessary to establish trademark infringement claims that are “use”, “in commerce” and “likelihood of confusion”

  1. Use – “Use” of a trademark by an alleged infringer must be established as a threshold matter.
  2. In commerce– demonstrates that the allegedly infringing activities have a substantial effect on interstate commerce.
  3. Likelihood of confusion – consumers viewing the allegedly infringing mark assume that the product or service it represents is associated with the source of a different product or service identified with a similar mark.

3.0 Trademark Case Apple vs Shenzhen Proview Technology Problem This case is about the rights to the iPad name between Apple and Shenzhen Proview Technology. Apple Inc. says it bought the global rights to the iPad name from Proview in 2009 but Chinese authorities say the rights in China were never transferred. A Chinese court ruled in December that Proview still owned the name in China. Verdict Apple has paid $60 million to settle a dispute in China over ownership of the iPad name. It removed a potential obstacle to sales of the popular tablet computer in the key Chinese market. Additional Information Proview initially hope for more. Proview was pressured to settle the case due to the debt they owed. Besides that, Proview also received pressure from the communist government to settle it because they wanted to attract investors to develop its economy. Unlike trademark squatters, who register names of products sold overseas and then request for the foreign companies to pay for the rights later, Proview trademark the iPad name long before Apple had the idea for its tablet. Ending the dispute with Proview meant that the leading tablet maker can legally begin selling under iPad trademark in its second-biggest market (Arthur, 2012). Danone Biscuits Manufacturing (M) Sdn Bhd vs Hwa Tai Industries Bhd Facts On 29 October 1990, Danone Biscuits (the plaintiff) a biscuit manufacturer for Jacob, Tiger, Danone and THYE THONG biscuit applied to register their “ChipsMore” trademark in Malaysia. The trademark were then registered and renewed up to 20 October 2007. The company had been manufacturing, selling and distributing their cookies in Malaysia since 1990 and exported their cookies to other countries in the region. However, in early April 2001, Danone biscuits discovered that another biscuit manufacturer in Malaysia named Hwa Tai Industries (defendant) had been manufacturing and selling chocolate chip cookies bearing the trademark called “Chipsplus” The plaintiff argued that the defendant’s trademark infringed upon its registered trademark and immediately requested the defendant to stop the manufacture and sale of cookies bearing the plaintiff trademark. Even though, the packaging of the product, were also confusingly same to the plaintiff registered “ChipsMore” mark., the defendant refused to do so and the plaintiff file a law sued against the defendant for trademark infringement. The plaintiff argued that the defendant’s “Chipplus” trademark infringed upon its registered trademark, while the similar packaging of the cookies causes the defendant passing off its “Chipplus” cookies as the plaintiff “ChipsMore” cookies that will eventually affect the plaintiff reputation, business and goodwill in Malaysia Judgment The High Court has made the decision in favor of the Plaintiff, ruling that there was infringement of the plaintiff’s trademark. Since the plaintiff had a registered certificate and renewal certificate evidencing a valid trademark and the plaintiff had not given the defendant authority to use their trademark, the defendant was found liable for infringement. An important issue that is highlighted by the Court was the trademark used was almost similar and it may likely create the possibility of confusion amongst the public. In Section 38 of the Trade Marks Act 1976 the word “likely” was define to mean that only possibility or probability of confusion needed to be established. Although the word “Plus” and “More” are two different words, there is sufficient similarity in idea. Furthermore, in deciding the similarity between two different words, the words has to be considered as a whole, by doing so, the court found the marks sufficiently similar to constitute trademark infringement on the defendant. Moreover, the use of similar trademark and packaging may possibly cause confusion and deception to a buyer of chocolate chip cookies. The rectangular packaging shape, the similar placing of both house marks are positioned on the upper left hand side of the packaging. Such misuse will damage the plaintiff business through the loss of sales of its products. Lastly, The Jury have made the decision that the defendant was liable and immediately ordered the defendant cease all manufacture of “Chipplus” cookies. The defendant were asked to change the name and the packaging of the cookies in order to sell their cookies in Malaysia. Furthermore, the plaintiff requested RM5500 from the defendant as compensation misusing their trademark. The defendant paid and changed their cookies named to “Kiddos”. Opinion This case illustrates the importance of respect for intellectual property. In this modern business world, many profit seeking firms will tend to misuse others intellectual property to help market their own business. This will save them lots of cost and will rise to the market in just nick of time. In this case, it also shows how serious courts are in protecting trademark owners from misappropriation of their commercial advantage through the use of substantially identical marks. This is why, it is important for business owners to seek advice from intellectual property professionals before registering their trademark to avoid this kind of issue from occurring which will save the company lots of money and time.

4.0 Conclusion The benefits of intellectual property allow business owners to prevent unauthorized use of the protected IP. If a patent protects a product, the creation of identical or similar brand name to products can be prevented. Besides that, in the case of academics, R&D teams and designers wanting to show that their technology is at the cutting edge of progress. Patents, copyright and trademark are a powerful indication that their work is cutting edge and they can be used as references in the same way as any other publications.

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