7 Cyberlaw & E- Commerce. 7 Making a Mark (WIPO Resources)

7Cyberlaw & E-Commerce

Trademark - International Considerations

7

Making a Mark(WIPO

Resources)

An Introduction to Trademarks

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What is a Trademark?

A trademark is a sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises

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What is a Trademark?

Any distinctive words, letters, numerals, drawings, pictures, shapes, colors, logotypes, labels or combinations used to distinguish goods or services may be considered a trademark.

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What is a Trademark?

In some countries (such as the United States), advertising slogans are also considered trademarks and may be registered as such at national trademark offices.

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What is a Trademark?

An increasing number of countries also allow for the registration of less traditional forms of trademarks, such as single colors, three-dimensional signs (shapes of products or packaging), audible signs (sounds) or olfactory signs (smells).

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What are Trademarks for?

The main function of a trademark is to enable consumers to identify a product (whether a good or a service) of a particular company so as to distinguish it from other identical or similar products provided by competitors

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The Value of Trademarks

For a detailed approach to trademark valuation analysis, see Intangible Asset & Intellectual Property Valuation: A Multidisciplinary Perspective, especially Table 1 and Sidebar 1, pages 6-7

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Why Protect Trademarks through Registration?

Registration, under the relevant trademark law, gives your company the exclusive right to prevent others from marketing identical or similar products under the same or a confusingly similar mark

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Protecting Trademarks

Trademark protection can be obtained through registration or, in some countries, also through use.

Even where trademarks can be protected through use, you are well advised to register the trademark by filing the appropriate application form at the national trademark office

Registering a trademark will provide stronger protection, particularly in case of conflict with an identical or confusingly similar trademark

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Rejecting a Trademark Application

Applications for trademark registration are usually rejected on what are commonly referred to as “absolute grounds” in the following cases: Generic terms

Descriptive terms

Deceptive trademarks

Public order or morality

Flags, etc.

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Registering a Trademark

First, choose your national trademark office

Next, proceed with international registration under the Madrid System