In general, it is clear how much protection is afforded trademarks; the mark is registered and can be used exclusively in the designated territory. Third parties are prohibited from performing certain actions, such as using identical marks (or marks which are similar, in specific cases) as this would be an infringement of the exclusive right.
However there is still the question of whether the general rules are always applicable in the same way with regard to non-traditional marks, and whether non-traditional marks are always registered with the same purpose in mind.
Instead of a copyright register - trademark registration
As a rule, copyright applies regardless of registration or a filing of any kind with a body, office or in a register, making it difficult to prove when a particular work was created or who the author is. It becomes abundantly clear, when looking at examples of registration of certain trademarks, that a trademark provides an easy solution to these problems, while equally there is no doubt that the trademark will meet the criteria for classification as a work.
Here is an example:
EUTM 018502040
Non-traditional in nature
It might be interesting to observe an attempt to infringe a trademark of that kind, and an attempt to evaluate whether marks are similar; despite the mark being non-traditional, this evaluation needs to be done according to similarity evaluation rules devised under trademark laws. The assessment of similarity of works in copyright law would be different. In any case, cumulation of claims would be possible.
Was this definitely supposed to be a trademark?
Observing the current trend in applications for non-traditional trademarks, one might wonder more and more what a particular trademark is in fact intended to protect, and whether a trademark is the right form of protection in the circumstances.
This is an example:
EUTM 017835679
or this:
EUTM 018363080
Evidently, an attempt has been made to include, as an element protected by the trademark, the principles according to which the product in question works, and this may be appropriate for other kinds of exclusive rights, such as a patent. If an allegation of infringement is made, is the question whether a competitor’s product is presented in the same way, or also whether the product works in the same way? There is also the issue of how in fact the marks will be used on the market – will a consumer be able to familiarize themselves with this form of presentation of the mark and how it works, and will they subsequently recognize the product?
Questions and concerns
There are a number of questions and concerns, but it might be tempting to “stretch” trademark protection – a trademark is the only form of industrial property that can theoretically last forever, provided that appropriate care is taken and it is renewed. This fact alone means that it is better to obtain a trademark for certain aspects of products, such as they way in which they work, than a patent (patent protection is limited to twenty years). The question is, however, how effectively “experiments” of this kind are protected, and whether perhaps the limits applicable to every industrial property right should be observed more stringently.
There is only one conclusion – the way to protect a brand is to employ a thoughtful strategy, taking a creative approach to the extent of trademark protection needed, mainly in order to gain a competitive edge.
Have more questions? Contact the author!
Anna Sokołowska-Ławniczak, PhD, Patent and Trademark Attorney, Partner