Overview

This profile considers trademark principles, issues, searching and landmarks.

     in this profile

The following pages cover

• history - the evolution of marks and trademark law
• global frameworks - Madrid and other agreements
• Australia - a snapshot of the Australian regime
• studies - major writing about trademarks and trademark protection
• issues - legislation, naming patterns, valuation and other e-commerce issues
• politics - marks and logos as a focus of contention about culture and globalisation
• registration - registering and protecting marks
• searches - tools for identifying whether a mark is protected in Australia and overseas
• logos - a discussion of logos as an area of trademark protection
• packaging - protection of colours and shapes as trademarks
• sounds - the emergence of sounds and smells as trademarks
• colours - questions about colours as trade marks
• certification - geographical indications and other certification marks
• cases - leading Australian disputes regarding trademarks
• landmarks - historical background to the development of trademarks as a business practice and regulatory issue

It supports the discussion in the Intellectual Property Rights guide and the Networks & GII guide about the nature of trademarks and tradenames in identifying web sites and engaging in electronic commerce.

     orientation

A trade mark is essentially about branding, providing a 'sign' that distinguishes particular goods or services from similar goods or services.

As noted in the Intellectual Property guide elsewhere on this site, trade mark legislation is situated at the boundary of industrial property law closest to trade practices law, concerned with the regulation of misleading behaviour among competitors in the marketplace. It allows the owner of the mark to build/maintain a brand. It also provides the consumer with a signal of quality, potentially including the properties of the item (eg its design and material), the manufacturer/retailer's preparedness to stand behind the item and its status.

A trade mark can be a graphic image (a logo or illustration), a name or a slogan. Some countries are providing trade mark protection for three dimensional shapes (eg that of a bottle), a sound or even a smell. When Naomi Klein fretted in No Logo (London: Flamingo 2000) about capitalism much of her lament was ostensibly concerned with trademarked symbols and jingles - the detritus or personification of a global economy - such as Nike's swoosh, the Coca-Cola ribbon, the brunette on Redhead matches, the dog on the EMI label or the big budgie on Rosella soup cans.

The 'Madrid system' - based on the 1890s Madrid Agreement Concerning the International Registration of Marks and 1996 Madrid Protocol - makes possible to makes it possible to obtain trademark protection in up to 79 countries. It also facilitates filing applications in national offices for national protection outside the Madrid system.

     basis

Ownership of a trade mark is based on

• national legislation, harmonised through international agreements that date from 1891
• registration by a national Trade Marks Office (or equivalent registry)

That protection is essentially restricted to the jurisdiction in which the mark is registered and to the 'class' or category under which the registration took place. Different individuals or enterprises can register and use the same term for products/services in distinct classes, eg beverages, building products and computer hardware. That means the one entity does not claim ownership of, for example, every product that uses the word 'Eagle'.

Ownership of a registered mark has the exclusive right to use it to identify specified goods and services, taking legal action against infringement of that right.

Registration in Australia lasts for a specific ten years and is thus different from copyright protection which generally runs for the author's life plus a specific period (usually life plus 70 years in Australia, the EU and US).

Unlike copyright, the protection for a trademark can be renewed (eg an initial ten years plus renewal for ten years followed by renewal for a further ten years ...) if the fees are paid to the registry and basic conditions about use of the mark are satisfied.

A registered trade mark is a commercial asset that can be traded, used as collateral or to embellish a balance sheet.

     rationale

The 150 page Trade-Related Aspects of Intellectual Property Rights paper (PDF) published by the Australian federal government's Productivity Commission in 2002 suggested that the fundamental rationale for exclusive rights is the prevention of free-riding, with marks being used to

differentiate similar goods and services and to convey the message that the good bearing the mark possesses a certain quality ... A firm that invested substantial resources in building up its reputation through quality control and advertising could lose much of this investment if free-riding competitors were not prevented by law from using its trade marks or very similar marks on their goods and services.

Marks allow enterprises to build sales and value by protecting their reputation, with

• consumers benefitting from reduced 'search costs' by using the mark to predict quality and
• enterprises thereby having an incentive to maintain a consistent quality in a envronment where performance and perception reinforce each other.

     registration

The registration mechanism in Australia (similar to that for patents) involves an applicant identifying whether a mark is already in use for a particular class or is otherwise unavailable. For example there are restrictions on use of the word ANZAC. Most countries now maintain major databases of trade marks, often with online search facilities. A later page of this profile highlights access to particular databases.

An applicant typically then submits an application for registration of a mark - in Australia to IP Australia (formerly the national Patent & Trademarks Office). The application includes corporate information and details of the goods and services with which the mark would be associated. Applications are checked using the databases and reference to statutory exclusions. If accepted, an application is then published and if unopposed, for example by the owner of an existing mark, the mark is formally recognised from the date of filing the application.

Trademark law as such emerged in the 1870s, with the first modern registration scheme in the UK in effect from 1875 (following a range of enactments in the 1860s), the first Japanese law in 1884 and the first Australian national trademark law from 1905. As we've noted in discussing trademarks, cybermarks and domain names in the Intellectual Property guide on this site, use of marks to identify goods dates from the Middle Ages (if not before). There's contention about the oldest continuously used mark and the oldest continuously used trademarks.

Contenders for the oldest continuously used marks include Lowenbrau (in use since 1383), Stella Artois (1366), Wielicka salt (1241?) Weihenstephaner beer (1040?) and Weltenburger Kloster Barock Dunkel beer (1050?). The 1266 'Bakers Marking Law' has been characterised as the earliest English law on marks and the earliest UK litigation over a mark dates from 1452.

The oldest continuously used UK trademark appears to be the red triangle logo of Bass brewery, appropriately the first registration in the UK register in 1875. Its Australian equivalent is the Fisons pine tree logo from 1905 under the Commonwealth enactment of that year. The first mark in Hong Kong dates from 1874 for Nestle's condensed milk, a reminder that globalisation predated the 1950s. The first US national registration - alas no longer used - was the eagle logo of Averill Paints. The first registered mark in Japan dates from 1884 and was issued to a pharmaceutical company.

     appellations

This site features a supplementary note on 'geographical indications' (aka appellations) - signs used on agricultural or other goods that have a specific geographical origin and that possess qualities or a reputation attributable to the place of origin.

     indigenous authenticity marks

The site also discusses Indigenous Authenticity Marks, signs to indicate that an art or craft work has been created by (or in close association with and authorisation by) an Indigenous person.

     how many marks?

Around 700,000 trademark applications were filed in the 10 leading trademark offices (eg Germany, the UK, US, Switzerland and Japan) from 1883 to 2005.

In 2007 WIPO reported that members of the Madrid system (ie the leading economies) received some 36,471 applications for international trademarks in 2006, up by 8.6% on the previous year (PDF). Germany (with 6,552 applications) ranked first for the 14th consecutive year, followed by France, the US, Italy and the Benelux states. Australia accounted for around 3% of applications for international marks. The leading filers under the Madrid system in 2006 included Siemens, Novartis, Henkel, Nestlé and Aldi. The top three filers from developing economies were Chinese, led by China Network Communications Group.

     TM and R

It is common, although generally not mandatory, for owners to signal the status of marks by using a ™ or ® symbol.

The ™ denotes a mark for which registration is being sought. ® denotes a mark that has been registered.

References to marks vary across jurisdictions. The US refers to a trademark (one word), in contrast to Australian usage (trade mark, ie two words).

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