A trademark, trade mark, or trade-mark is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. For the sake of corporate identity trademarks are also being displayed on company buildings. A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements.

Trademark identifies the brand owner in a precise product or service. Trademarks can be accredited to others; for example, Transcom BD obtained a license to produce Pepsi from PepsiCo, USA; the Hossen Motors licensed from Alteco Chemical Pte Ltd., Singapore in order to be allowed to launch Alteco Super Glue and related products in Bangladesh; The unauthorized usage of trademarks by producing and trading counterfeit consumer goods is known as brand piracy.

The owner of a trademark may pursue legal action against trademark infringement. Most countries require formal registration of a trademark as a precondition for pursuing this type of action. The United States, Canada, England, India, Bangladesh and other countries also recognize common law trademark rights, which means action can be taken to protect an unregistered trademark if it is in use. Still common law trademarks offer the holder in general less legal protection than registered trademarks.

A trademark may be designated by the following symbols:

™ (the “trademark symbol”, which is the letters “TM”, for an unregistered trademark, a mark used to promote or brand goods)

℠ (which is the letters “SM” in superscript, for an unregistered service mark, a mark used to promote or brand services)

® (the letter “R” surrounded by a circle, for a registered trademark)

There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound (like jingles). A trademark cannot be offensive.

The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark.

The important function of a trademark is to exclusively identify the commercial source or origin of products or services, so a trademark, properly called, indicates source or serves as a badge of origin. In other words, trademarks serve to identify a particular business as the source of goods or services. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark.

It should be noted that trademark rights generally arise out of the use of, or to maintain exclusive rights over, that sign in relation to certain products or services, assuming there are no other trademark objections.

Different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea behind this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world.

Well-known status:

Well-known trade mark status is commonly granted to famous international trade marks in less-developed legal jurisdictions.

Pursuant to Article 6 bis of the Paris Convention, countries are empowered to grant this status to marks that the relevant authority considers are ‘well known’. In addition to the standard grounds for trade mark infringement (same/similar mark applied same/similar goods or services, and a likelihood of confusion), if the mark is deemed well known it is an infringement to apply the same or a similar mark to dissimilar goods/services where there is confusion, including where it takes unfair advantage of the well-known mark or causing detriment to it.

A well-known trademark does not have to be registered in the jurisdiction to bring a trade mark infringement action (equivalent to bringing a passing off claim without having to show goodwill and having a lesser burden of proof).

Protection of well-known marks:

Many countries protect unregistered well-known marks in accordance with their international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). Consequently, not only big companies but also SMEs may have a good chance of establishing enough goodwill with customers so that their marks may be recognized as well-known marks and acquire protection without registration. It is, nevertheless, advisable to seek registration, taking into account that many countries provide for an extended protection of registered well-known marks against dilution (Art. 16.3 TRIPS), i.e., the reputation of the mark being weakened by the unauthorized use of that mark by others.

A number of trademark laws merely implement obligations under Article 16.3 of the TRIPS Agreement and protect well-known registered trademarks only under the following conditions: 1- that the goods and services for which the other mark is used or is seeking protection are not identical with or similar to the goods for which the well-known mark acquired its reputation;

2- that the use of the other mark would indicate a connection between these goods and the owner of the well-known mark; and

3 – that their interests are likely to be damaged by such use.

 Domain names:

The beginning of the domain name system has led to attempts by trademark holders to enforce their rights over domain names that are similar or identical to their existing trademarks, particularly by seeking control over the domain names at issue. As with dilution protection, enforcing trademark rights over domain name owners involves protecting a trademark outside the obvious context of its consumer market, because domain names are global and not limited by goods or service.

This conflict is easily resolved when the domain name owner actually uses the domain to compete with the trademark owner. Cybersquatting, however, does not involve competition. Instead, an unlicensed user registers a domain name identical to a trademark, and offers to sell the domain to the trademark owner. Typosquatters—those registering common misspellings of trademarks as domain names—have also been targeted successfully in trademark infringement suits. “Gripe sites”, on the other hand, tend to be protected as free speech, and are therefore more difficult to attack as trademark infringement.

(This article is a segment of author’s research on “INTELLECTUAL PROPERTY LAWS IN BANGLADESH: CURRENT STATUS WITH PROBLEMS AND FUTURE DEVELOPMENT” for the degree of MASTER OF PHILOSOPHY, Under International Culture University. This article is published for educational purpose only, plagiarism is strictly prohibited)

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Rajin Ahmed

Ph.D. (Fellow), Advocate. Member: Bangladesh Intellectual Property Law Society (BIPLS). Member: Society for Information and Research on Business Intellectual Inventions (SIRBII). Associate: Intellectual Property Association of Bangladesh

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