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Wednesday, 30 November 2011


A trademark is a symbol that signifies the products exclusivity as a means of identifying and referring to product of the kind for which it is registered. Only the proprietor of the trademark is entitles to authorize the marketing of marked products and therefore it establishes that the goods have the same trade origin that the trademark signifies. Further, in EEA, at least, the right to first marketing of the goods is given to the proprietor under article 7, this means the proprietor of the trademark has the right to first market the goods within EEA. “In relation to trademarks, the specific subject-matter of the industrial property is the guarantee that the owner of the trademark has the exclusive right to use that trademark, for the purpose of putting products protected by the trademark into circulation for the first time, and is therefore intended to protect him against competitor wishing to take advantage of the status and reputation of the trademark by selling products illegally bearing that trademark”[1]
 As noted above the trademark signifies that there is one undertaking (owner of the trademark) which controls the quality and all the other characteristic of the marked products. It gives a guarantee of consistency in the quality and condition of the product to the consumers. Thought this guarantee is not legal guarantee about the quality or any other characteristic of the marked products it’s just the guarantee of the trade origin. This means that trademark only provides the likelihood that the marked product will remain in certain a consistent standard as to the quality and condition is concerned. Thus guarantee provided by the trademark gives the consumer a reference point that enables the consumer to identify the products that meet their requirement.  Lord Nicholls has also included to this limitation in Scandecor Development v. Scandecor Marketing:
“In relying on a trade mark consumers rely, not on any legal guarantee of quality, but on the proprietor of a trade mark having an economic interest in maintaining the value of his mark. It is normally contrary to a proprietor’s self-interest to allow the quality of goods sold under his banner to decline”[2].
As trademark gains recognition, it undergoes two stages.
First, consumers awake themselves of the existence and availability of marked products when searching for products and connect these products with their own experience
Secondly, the trademark gains a reputation in the minds of consumers relating to the likely quality marked products, which the consumers remembers as it meets their expectations of these products based on their collective experience.[3]
The Directive recognizes how these stages can increase the marketing power of a trade mark through expanding the owner’s exclusive rights in line with its level of recognition on the market. Article 5.1 of the directive, states that, the trademark provides the means to identify products on the basis of trade origin; it gives the owner of the trademark the right to prohibit any unauthorized use of the trademark.[4] Article 5.1 extends this core right to the extent that it include signs that are similar to the trade mark may not be registered or used as it may give rise to a “likelihood of confusion” on the part of the public, which ensures the trade mark’s quality of distinguishing marked products from others. ‘Likelihood of confusion’ means that consumers are likely to assume incorrectly that the third party’s products come from the same undertaking as marked products or have a trade origin that is economically or organizationally linked to the owner of the trade mark.
Article 5.1, therefore, strengthens the legal protection of a trade mark’s capacity to perform its essential function, which is ‘to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possible confusion, to distinguish the product or service from others which have a different origin’.[5] ECJ has indicated that greater recognition would make the trade mark more ‘distinctive’ and that this would increase the likelihood of confusion.[6] In Canon v. MGM, the ECJ concluded:
Since protection of a trade mark depends … on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with less distinctive character.[7]

 The Directive also gives the owner of a trade mark other exclusive rights to control its use in advertising and other promotional material, which further increases its value as a marketing resource.[8] L’Oréal v. Bellure, the ECJ ruled that a trade mark can perform several functions in addition to its essential function of guaranteeing trade origin, including ones it termed the ‘communication, investment or advertising’ functions, and that the Directive should protect all of these functions.[9] As regards the legal protection of these additional functions, Article 5.2 appears to be designed to protect them. This provision extends the exclusive rights of an owner whose trade mark has ‘a reputation’ so that the owner is entitled to prohibit a third party’s use of an identical or similar sign ‘where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark’. In General Motors v. Yplon,[10] the ECJ ruled that the trade mark must have achieved a minimum level of recognition to satisfy the prerequisite of having ‘a reputation’.

In light of the above said we can say that the trademarks legally performs two essential function in marketing
1.      It provides face or identity to the products, which further provides the consumers a reference point to form their express choice.
2.      It can be used in advertisement and other promotional activity of the marked products, for connecting the consumers to source information of the product and the consumer’s prior experience. 

[1] Centrafarm/Winthrop, Rec. ECJ,  p. 1183
[2] : [2001] ETMR 800 at [19]
[3] A. Griffiths, An Economic Perspective on Trade Mark Law (Edward Elgar Publishing, 2011) (Blackboard)
[4] Article 5.1 provides that the owner of a trade mark ‘shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered’
[5] Hag II [1990] 3 CMLR 571 at [13].
[6] Sabel v. Puma [1998] ETMR 1
[7] Canon v. MGM [1999] ETMR 1 at [18]
[8] L’Oréal v. Bellure [2009] ETMR 987 at [51]-[58].
[9] Google France v. Louis Vuitton Malletier [2010] ETMR 503
[10] General Motors v. Yplon [1999] ETMR 950.

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