Different types of trademarks for SMEs
IN this final write-up on the subject of trademarks for SMEs I focus on the different types of marks, which SMEs can choose to use for their enterprises. As mentioned in previous articles, trademarks are used to distinguish certain goods as those produced by a specific enterprise.
Service marks These are marks used to distinguish certain services as those provided by a specific enterprise. A service mark is very similar in nature to a trademark. Both are distinctive signs. Trademarks distinguish the goods of one enterprise from those of others, while service marks fulfill the same function in relation to services. Services may be of any kind, such as financial, banking, travel, advertising or catering, to name a few. Service marks can be registered, renewed, cancelled, assigned and licensed under the same conditions as trademarks.
Collective marks These are marks used to distinguish goods or services produced or provided by members of an association. A collective mark is generally owned by an association or cooperative whose members may use the collective mark to market their products. The association generally establishes a set of criteria for using the collective mark (e.g., quality standards) and permits individual companies to use the mark if they comply with such standards. Collective marks may be an effective way of jointly marketing the products of a group of enterprises, which may find it more difficult for their individual marks to be recognised by consumers and/or handled by the main distributors.
Certification marks These are marks used to distinguish goods or services that comply with a set of standards and have been certified by a certifying authority. Certification marks are given for compliance with defined standards, but are not confined to any membership. They may be used by anyone whose products meet certain established standards. In many countries, the main difference between collective marks and certification marks is that the former may only be used by a specific group of enterprises for example, members of an association, while certification marks may be used by anybody who complies with the standards defined by the owner of the certification mark. An important requirement for certification marks is that the entity which applies for registration is considered “competent to certify” the products concerned.
Example: The Woolmark symbol is the registered trade (certification) mark of the Woolmark Company. The Woolmark is a quality assurance symbol denoting that the products on which it is applied, are made from 100 percent new wool and comply with strict performance specifications set down by the Woolmark Company. It is registered in over 140 countries and is licensed to manufacturers who are able to meet these quality standards in 65 countries.
‘‘The use of ®, TM, SM or equivalent symbols next to a trademark is not a requirement . . .’’
Well-known marks These are marks that are considered to be well-known in the market and as a result benefit from stronger protection. Well-known marks are marks that are considered to be well-known by the competent authority of the country where protection for the mark is sought. Wellknown marks generally benefit from stronger protection. For example, well-known marks may be protected even if they are not registered (or have not even been used) in a given territory. In addition, while marks are generally protected against confusingly similar marks only if used for identical or similar products, well-known marks are protected against confusingly similar marks for even dissimilar products, if certain conditions are met. The main purpose of this stronger protection is to prevent companies from free-riding on the reputation of a well known mark and/or causing damage to its reputation or goodwill. Can you register a trademark
without having used it? You may apply for registration before you have used the trademark but some countries will not officially register it until you have shown proof of use (e.g., the United States). Also, in most cases, a trademark that has not been used for a given period of time (generally three to five years) following registration may be taken off the trademark register. This means you could lose your rights in your trademark. The use it or lose it rule.
TM or ® The use of ®, TM, SM or equivalent symbols next to a trademark is not a requirement and generally provides no further legal protection. Nevertheless, it may be a convenient way of informing others that a given sign is a trademark, thus warning possible infringers and counterfeiters. The ® symbol is used once the trademark has been registered, whereas TM denotes that a given sign is a trademark; SM is sometimes used for service marks.
Enforcing Trademarks The burden of enforcing a trademark is mainly on the trademark owner. It is up to your company as a trademark owner to identify any infringement and to decide what measures should be taken to enforce trademark rights. It is always useful to seek expert advice if you believe that someone is infringing your trademark. An intellectual property lawyer would be the right person to give you information on the existing options in your country and, presumably, also in neighbouring countries to initiate action against counterfeiting and infringement and will provide you with advice on how to enforce your rights. If you are faced with infringement of your trademark rights, then you may choose to begin by sending a letter (commonly known as a “cease and desist letter”) to the alleged infringer informing him/her of the possible existence of a conflict. In writing such a letter, the assistance of a trademark lawyer is recommended. If your business considers the infringement to be willful and knows the location of the infringing activity, then it may wish to take surprise action by obtaining, with the help of a trademark lawyer, a search and seize order (usually, from a competent court or the police) to conduct a raid without prior notice to the allegedly offending company/person.
The infringer may be compelled by the judicial authorities to inform you of the identity of persons involved in the production and distribution of the infringing goods or services and their channels of distribution. As an effective deterrent to infringement, the judicial authorities may order, upon your request, that infringing goods and materials be destroyed or disposed of outside the channels of commerce without compensation of any sort.
In order to prevent the importation of counterfeit trademark goods, measures at the international border are available to trademark owners in many countries through the national customs authorities. As a trademark owner, your company may seek the assistance of the customs authorities at the border, that is, before the counterfeit goods have been distributed in the country concerned. The assistance of customs would generally require payment of prescribed fees, for which you will have to contact the relevant customs authorities.
In some instances, an effective way of dealing with infringement is through arbitration or mediation. Arbitration generally has the advantage of being a less formal, shorter and cheaper procedure than court proceedings, and an arbitral award is more easily enforceable internationally. An advantage of mediation is that the parties retain control of the dispute resolution process. As such, it can help to preserve good business relations with another enterprise with which your SME may like to collaborate in the future.