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Trade Marks


A trade mark (spelt trademark in the USA and in some international agreements) is a sign that identifies the supplier of goods or services. As such trade marks serve two functions First, they enable suppliers to create, develop and protect brands which often have considerable worth in themselves. Secondly, they guarantee the origin and in many cases the nature or quality of goods or services to consumers.

Legal Protection of Trade Marks
In most countries, trade marks are protected in a number of ways. First, there are common law rules that forbid marketing of goods or services in such a way as they are likely to be mistaken for those of another. In the UK, Ireland and most other common law countries these rules are known as the action of passing off or occasionally palming off and, in other countries, as unfair competition. Secondly, most countries have a system of trade mark registration. Registration of a sign with a national or supra-national trade mark registry confers on the person registered as the proprietor of the registration ("the registered proprietor") the exclusive right to use the registered mark in respect of such goods or services as may be specified on the register. Thirdly, the EC and many other countries protect geographical appellations of wines, spirits, farm or other produce for which particular regions have a reputation by special legislation. Finally, the criminal and customs laws of most countries prohibit counterfeiting, intentional misrepresentations of origin and cross-border traffic in bogus goods.

The Agreement on Trade-related Aspects of Intellectual Property Rights [WWW]("'''TRIPs'''") imposes 4 sets of requirements upon members of the [WWW]World Trade Organization ("'''WTO'''"). First, art 15 (1) requires members to provide for the registration of signs capable of constituting trade marks. The effect of registration should be to confer upon registered proprietors exclusive rights to prevent all others from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the mark is registered where such use would result in a likelihood of confusion (art 16). The second set of obligations under art 22 is to provide the legal means for interested parties to prevent the use of any means in the designation or presentation of goods that indicates or suggests that such goods originate in a geographical area other than the true place of origin in a manner which misleads the public as to their geographical origin. Members are also required to prevent unfair competition within the meaning of art 10bis of the [WWW]Paris Convention for the Protection of Intellectual Property ('''Paris Convention'''). Thirdly, art 2 of TRIPs requires WTO members to comply with arts. 1 to 12 and 19 of Paris. These articles cover trade names, trade marks and repression of unfair competition. Finally, art 61 of TRIPs requires WTO members to provide for criminal procedures and penalties to be applied in cases of wilful trade mark counterfeiting on a commercial scale.

Legal Protection in the EC
The EC has adopted legislation to harmonize trade mark law between member states, establish a Community wide system of trade mark registration and protect geographical origins of food, drink and other produce. [WWW]The First Trade Marks Directive (First Directive 89/104/EEC of the Council, of 21 Dec 1988, to approximate the Laws of the Member States relating to Trade Marks (OJ EC No L 40 of 11.2.1989, p. 1)) defines signs that may be registered as trade marks, establishes grounds for refusing registration, specifies the rights that may be granted by registration, provides for licensing and sets out the circumstances in which trade marks may be revoked or declared invalid. requires member states to harmonize their national trade marks law.

Community Trade Marks
[WWW]The Community Trade Mark Regulation (Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark) created a Community trade mark ("the CTM"). It established [WWW]OHIM (the Office for Harmonization in the Internal Market) as the registry for the CTM. The regulation endows the CTM with a unitary character with equal effect throughout the Community: In contrast to the European patent it may "not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community." Rules for processing applications, grant, revocation, invalidity and other administrative matters are contained in the Implementing Regulation (Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark).

Legal Protection in the UK
There are in the UK, as in other EC member states, two trade mark regimes, namely the CTM and national trade marks. National or British trade marks may be registered with the Trade Marks Registry of the [WWW]UK-IPO (UK Intellectual Property Office) under the provisions of the [WWW]Trade Marks Act 1994. The Act implements the First Trade Mark Directive and provides for the CTM and the [WWW]Madrid Protocol (Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) which facilitates cross-border registration of trade marks from a single registration through the WIPO (World Intellectual Property Organization).

Trade marks are enforced by civil proceedings. In England and Wales infringement claims are brought in the Chancery Division of the High Court of Justice or the Central London, Manchester, Leeds, Liverpool, Newcastle, Bristol, Birmingham or Cardiff County Courts. The UK-IPO may hear applications for declaration of invalidity and revocation but not infringement claims. Claims for infringement of a CTM have to be brought in a Community trade mark court (that is to say a national court designated by a member state to hear CTM claims). The High Court of Justice and the above county courts are Community trade mark courtd for England and Wales. Certain trade mark infringements are also offences under the Trade Marks Act 1994 itself or the Trade Descriptions Act 1968 or at common law. Criminal penalties for some of those offences have recently been increased substantially by the[WWW]Copyright, etc. and Trade Marks (Offences and Enforcement) Act 2002. Local authority trading standards officers prosecute such offences (see the [WWW]IP Crime Report 2007).

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