Transcript Marka
Dr. Özlem Döğerlioğlu
IŞIKSUNGUR
Yaşar Üniversity Lecture Notes
[email protected]
1
The average person sees or hears
more than 1,500 trademarks each
day!
IMPORTANCE OF TRADEMARK
increased competition among companies undertaking
trade in more than one country
used to simplify the identification by consumers of
goods or services, as well as their quality and value
Effects on consumer preferations
Consumer dependency on products/services
Increase on the demand of product/services
Distinction: Pepsi-Cola and Coca-Cola
Asset value? Trademark value?
The main purpose of a trademark
the main purpose of a trademark is
-to identify the source of a product and
-to distinguish that product from products coming
from other sources.
1. What is a trademark?
What it is not
Classical definition: “A trademark is any sign that
individualizes the goods of a given enterprise and
distinguishes them from the goods of its competitors”.
Two functions:
- individualization
- distinction (Also shows quality, origin/ be used as
advertisement)
Two main characteristics:
-it must be distinctive
-it should not be deceptive
1. What is a trademark?
Court of Justice of the European Communities, September 29, 1998 - Case
C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.,
formerly Pathe Communications Corporation:
“… according to the settled case-law of the Court, the
essential function of the trade mark is to guarantee the
identity of the origin of the marked product to the
consumer or end user by enabling him, without any
possibility of confusion, to distinguish the product or
service from others which have another origin.”
TRIPS, Article 15
Article 15 - Protectable Subject Matter
1. Any sign, or any combination of signs, capable of
distinguishing the goods or services of one
undertaking from those of other undertakings, shall
be capable of constituting a trademark. Such signs, in
particular words including personal names, letters,
numerals, figurative elements and combinations of
colours as well as any combination of such signs, shall
be eligible for registration as trademarks. Where signs
are not inherently capable of distinguishing the
relevant goods or services, Members may make
registrability depend on distinctiveness acquired
through use. Members may require, as a condition of
registration, that signs be visually perceptible.
European Directive 89/104
Article 2 - Signs of which a trade mark may consist
A trade mark may consist of any sign capable of being
represented graphically, particularly words, including
personal names, designs, letters, numerals, the shape of
goods or of their packaging, provided that such signs are
capable of distinguishing the goods or services of one
undertaking from those of other undertakings.
AIM/OWNER/REGISTRATION
Aim:
to protect the name of the product rather than the
invention or idea behind the product.
Owner:
can be owned by individuals or companies
Registration:
should be registered at a governmental agency, which
is usually referred to as the Trademarks Office.
A trademark may consist of
words,
designs,
letters,
numerals or packaging,
abbreviations or names (famous make of car, Ford – named,
of course, after Henry Ford, who built the first one)
slogans,
devices,
symbols, etc.
QUESTION
the word “vegetable”
can be registered as a trademark of a supermarket?
can be registered as a trademark for carrots?
can be registered as a trademark for pencil?
Sample Trademarks
Words: ‘Apple’ for computers; Deutsche Bank for a bank,
Arbitrary or fanciful designations: Coca-Cola, Nikon, Sony,
NIKE, Easy Jet.
Names: Ford, Peugeot, Hilton (hotel)
Slogans: ‘Fly me’ , for an airline;
Devices: the star for Mercedes Benz, the flying lady for
Rolls Royce
Number: the 4711 cologne
Letters: GM, FIAT, VW, KLM
Pictures or symbols: Lacoste (small crocodile)
DISTINCTIVENESS
when assessing the distinctiveness of a sign for a
TRADEMARK it has to be judged together with the
goods or services it is to be associated with.
The most common way of protecting a trademark is to
have it registered in the Trademark Register
unregistered trademarks are also protected in some
countries but it is a less reliable form of protection.
COLLECTIVE MARKS
“Collective marks usually belong to a group or association of
enterprises. Their use is reserved to the members of the group or
association. A collective mark therefore distinguishes the goods
or services of members of the association from those of other
undertakings.
The function of the collective mark is to inform the public
about certain particular features of the product for which the
collective mark is used. An enterprise which uses the collective
mark may, in addition, use its own trademark. Example: in an
association of architects or engineers, a member may use the
logo of the association as well as the logo of the enterprise.”
Reference:
WIPO Notes concerning General Course on
Intellectual Property Rights
CERTIFICATE MARKS
“A certificate mark is a mark indicating that the goods or
services in connection with which it is used are certified by the
proprietor of the mark in respect of the origin, mode of
manufacture of goods, quality or other characteristics. The
certification mark may only be used in accordance with the
defined standards. Example: ISO 9000.
Reference: WIPO Notes concerning General Course on
Intellectual Property Rights
WELL-KNOWN TRADEMARKS
“Some companies have successfully established, via
their trademarks or service marks, worldwide renown.
Subsequently, consumers can, without effort,
recognize and identify their goods and services, their
qualities and their features without referring to the
location of the company in question. These
trademarks are called well-known marks or famous
marks. Examples: Sony, Versace, Louis Vuitton, etc.”
Reference: WIPO Notes concerning General Course on
Intellectual Property Rights
When a trademark is well-known
trademark?
The Factors
degree of knowledge or recognition of the mark in the
relevant sector of the public and the duration, extent
and geographical area of any use of the mark.
TRADEMARK IN TURKISH LAW
AGREEMENTS RELATED TO
PROTECTION OF TRADEMARKS
Paris Convention
TRIPs Agreement
Madrid Protocol
Trademark Law Treaty
Vienna Agreement
Nice Agreement
21
Current Legislation
Decrees with the effect of law numbered 556
By-law related to the application of Decrees
with the effect of law numbered 556
22
DEFINITION
Decrees with the effect of law numbered 556
Article 5
“Any sign .......... provided that it distinguishes the goods
or services of a given enterprise
goods&services of its competitors”
from
the
Trademark consist of any sign such as
names ,words,
letters,
Numerals
Colour combinations ,
24
TYPES OF THE TRADEMARK
Commercial Trademarks
Service Trademark
Collective Trademarks
Guarantee Trademark
Community Trademark
Industrial Designs can not be registered as Trademark
Application for Trademark Registration
Real &Legal person or their legal representative
Necessary Documents:
Petition
Trademark sample
The list of goods or services where the trademark shall be
used
Payment documents
For each trademark registration, seperate application is
necessary
26
Process
Formal Examination
2) Meritorious Examination
3) Objection period
4) Registration
1)
27
Grounds for refusal of trademark
registration
Absolute grounds (Article 7)
Relative grounds (Article 8)
29