Trademarks

Trademarks are the vehicles that take products to the market. Service marks act in the same way for services. Essentially, they indicate the marks of origin of products so that customers in the market can decide which product they want to patronise. Trademarks are protected so that competitor goods do not benefit from the success of the true owner of a mark. Trademarks protect words, phrases, symbols, sounds, and designs that differentiate goods of one source from others.

Over time, there are some trademarks that have become synonymous with the products that they market, like Bic/Biro have become for pens, or Hoover, for vacuum cleaners.

Trademarks also communicate to the customer what they expect from a product. It takes time to build respect in the market place and IP law seeks to protect mark owners from lower standard products passing off and benefiting from the advantage created and nurtured by the trademark owner. You can imagine how damaging it would be to a pharmaceutical brand if a quack medicine manufacturer puts out a drug with no real benefits and sells it as a product of a trademarked brand or under a name so closely related to a trademarked brand that it causes confusion in the market. This is what the law seeks to protect.

Trademarks are registered in different classes for goods and services. It is possible to have the same or similar trademarks registered in different classes. Theoretically, you can register a trademark that already exists, as long as you are not using it in the same category as the existing trademark. This is to prevent someone with the same or similar product or service from having the same name as an existing good or service. Imagine the confusion that would cause for customers.

The law wants us to make our choices with our eyes wide open. The same product can exist under different trademarks. Some like Heineken lager beer, others prefer Coors. Beer is beer, you may say, but to those with a finer palate, there is a difference. Also, in the drinks category, some may like Pepsi, others will only drink Coca-Cola.

Some people, like me, will always reach for a pair of trousers marked with Benetton over any other because, over time, I feel that they fit my shape better than any other brand of ready-made trousers. When your big cheques start rolling in, do you go for a BMW car or a Mercedes Benz? It is all about brand recognition, as we say in Nigeria. The trademark places some assumptions on the product with its mark – consumers have expectations based on the mark that they choose.

Similar marks in different classes are usually not in conflict with each other, with one exception: similar marks for similar products that are sold in the same marketing channels may be in conflict even if they are registered in different classes.

An example of the ability for trademarks to co-exist in different categories is Bounty chocolate and Bounty kitchen napkins.

Finally, trademarks must be used in the course of business. You can lose the right to use your trademark after a number of years of non-use.

In the everlasting words of Nina Paley, a cartoonist and creative entrepreneur, ‘You can’t monetize anonymity.’ You have to stand out. You have to put yourself out there and create value for your brand.

As mentioned earlier, while copyright does not require registration to be cloaked with the force of law, the other two areas of IP do. Trademarks, patents, and designs must be registered to be recognised.

Registering Your Trademark

Generally, registration of trademarks is controlled by government agencies assigned with the task of receiving, and reviewing applications, and granting protection as requested. Every jurisdiction has its own requirements but the general idea is the same. While Do-It-Yourself solutions exist in some jurisdictions for the registration of trademarks, it is advisable to seek the advice of a lawyer who is knowledgeable in trademark law.

There are many considerations before a trademark is granted. Primarily, the trademark office must make a determination that the new trademark is not the same or similar to or likely to cause confusion with an existing trademark.

In business, it is important to protect your name and image. Therefore, in deciding what will represent a business – its logo, product, designs, marks and all that will define the business – a wide search must be conducted to ensure that a new entrant in the market is not infringing on the rights of another business.

The trademark registration bodies conduct searches as a requirement before granting protection to an application. However, nothing stops a business owner from doing their own search at the initial stages. A business owner must ask themselves whether there is any chance that their name or mark will be mistaken for an existing name or mark, whether separately or jointly represented.

It is acceptable to like the look and feel of an existing business, however, it is advisable to ensure that in constructing the look and feel of your own business, inspiration does not cross the line into infringement. It is one thing to be inspired by something that exists, and quite another to infringe on the rights over what exists.

In addition to the look and feel, another thing a business owner must take into consideration is how large a space they want to play in. A business X may get away with infringing on the IP rights of another business Y, but the game will come to an end when business Y becomes aware of the infringement. Every business will act to protect its assets. Today, with more and more corners of the world being accessible through technology, it is more difficult to hide an infringement. A crawl through the world wide web for things such as domain names, logos, and other identifiers associated with a business is advisable for any person looking to start up their own business. Compare the names and designs of existing businesses with yours and ask yourself whether they look alike, sound alike, or are similar enough to be confusing. Also, ask if there is any likelihood that people will think that your product is a product of an existing trademark. Will your name and design cause confusion in the market? If so, then consider another name and mark to distinguish yourself and protect yourself from a likely infringement lawsuit.

Five Steps To Choosing A Name For Your Business, Service, or Product

Conduct an internet search to discover other businesses with similar names and determine if their names and products or services conflict with your intended use.
Conduct a search across social media for similar business names, and if your desired name is available to you.
Do a domain name search for the name you want to use. If your desired name is not available, search for acceptable variations.
Check with the official Business Registrar (business registration database) in your jurisdiction that the name is available. In Nigeria, that would be the Corporate Affairs Commission.
Finally, do a search with the Trademark Office in your jurisdiction to avoid infringing on the rights of another business owner. If you are in the US, that would be the US Patent and Trademark Office.

Take the time to go through these steps and do a search for what already exists so that you don’t spend money building on another business’s property.

The legal backing provided by IP rights gives value to a business, which can then be traded or exchanged for more value, adding to the assets of a business. This is done through sale, licensing, assignments, and other such transactions to allow the transfer and exploitation of the assets. When you are aware of the value of your IP, it can be leveraged and used as collateral for business loans.

You can read more about intellectual property in the articles:

The Basics: What is Intellectual Property?

The Basics: What is Copyright?

The Basics: What is Patents and Design?

The Basics: How to Manage Your Intellectual Property