Introduction
Intellectual property refers to various innovations which are unique to a business enterprise or an artistic work which are useful in identifying the business or artistic work and is recognized by the law. There are various ways of protecting intellectual property for instance the use of patents, copyrights and trademarks among others. Symbols, names and sounds of a business enterprise are distinguished from the rest in the same business through the use of trademarks. Trademarks are also useful in protection of colors and words. It also helps to make a distinction between goods and services belonging to one company from those of a different company. This paper shall address some trademark problems that may arise in the given scenarios.
Reasons for the decline of an application to register a trademark
According to Bellis (2012), it is necessary for a trademark to be registered in order to avoid problems that may arise as a result of having an unregistered trademark. However, it is still possible to have an unregistered trademark which can not be used by another company. There are certain steps that have to be followed in trademark registration. It is necessary for any trademark that is being registered to pass through all the required steps in order to ensure that no infringement of rights occurs in the process. This means that it is possible for a trademark not to be registered in case the registering body ascertains that it will infringe some trademark rights. Bellis (2012) further observes that there are various reasons that may cause a trademark not to be registered.
The reasons for declining to register a trademark are usually stipulated in a country’s laws. For example in the United Kingdom, there is a trademark act that lists down the reasons that can cause a trademark not to be registered. Some of the reasons include trying to register a trademark with a motive that is not right, if the trademark one is registering is similar to another that is in existence already or if one is trying to register a trademark in order to cause confusion to the target audience concerning the product that the trademark is supposed to identify. According to Greenhalgh & Rogers (2010), any trademark that may cause confusion about products or services it is identifying, in terms of their quality, the composition or source of products and services cannot be registered.
Moreover, trademark registration may be declined if it cannot be differentiated from another that has already been registered (Schechter and John, 2003). This is to avoid any confusion between goods or services that the trademarks are meant to identify. Additionally, the registration of a trademark may be declined if the symbols and signs used in the trademark are obscene or morally unacceptable in the society where it is meant to be used. The registering attorney may also refuse to register a trademark if its role is not distinguishing the products or services from those offered by other entities but that of ornamentation. This means that the trademark is used for aesthetic purposes rather than for the core purpose that it is intended. Consequently, the trademark may fail to be registered because it fails to serve an important function that trademarks are supposed to.
Consequences of an application to register a pyramid shape for chocolate mints
There are several consequences may result from trying to register a pyramid shape for chocolate mints, ‘pointymints’. The application to register this trademark may be declined due to several reasons. In the United Kingdom, the grounds for refusal are stipulated in the trademark act of 1994. In the case of trying to register a trademark for pointymints, which have a pyramid shape and are similar in some ways to another brand known as ‘Toblerone’, the act forbids the registering attorney from doing so due to various reasons. It is not allowed for one to register a trademark whose shape represents the characteristics of the goods or services that it is supposed to distinguish from the rest.
The application to register a trademark for pointymints will therefore be declined because the triangular shape of the trademark represents the true nature of the mints that the trademark is representing. Moreover, there is another brand of similar mints that is in existence. Registration of the trademark for pointymints may therefore cause confusion to the general public concerning the source of the products. Moreover, the name ‘pointymints’ to any consumer suggests a pyramid shaped chocolate. This depicts the exact nature of the products that the trademark is identifying. This is contrary to the trademark act. This also may be a ground for refusal to register the trademark. Being identical to an already existing brand known as ‘Toblerone’ may also be a ground for refusal of registration of this trademark. Registration of a pyramid shape for chocolate mints will therefore be declined, because the trademark fails to meet the requirements for registration.
Consequences of an application to register the brand name ‘Oxford’ for bicycles
Trademarks used by different companies could either be registered or unregistered. The trademark act in many countries recognizes and protects any trademark that is registered. According to Drahos (1996), trademarks awaiting confirmation after application for registration are also recognized by the law and cannot be duplicated by another person. A trademark whose owners have not applied for registration is referred to as an unregistered trademark. This type of trademark may not enjoy the protection that registered trademarks are given by the trademark act in the law of the land.
However, in some parts of the world such as the UK, unregistered trademarks may still enjoy some protection from certain portions of the law such as from ‘passing off’. This means that although the unregistered trademark is not fully protected by the trademark law, the owner of an unregistered trademark can still prevent any third party from using the trademark without the owner’s permission. Some unregistered trademarks also enjoy protection from the law by being recognized to be used within a particular geographical setting. This means that no other individual or organization can use the same unregistered trademark within that geographical area.
Since oxford has been in existence as an unregistered trademark, it is possible for the bicycles to start using this brand name, if the owner of the company takes the initiative to register the trademark. Although the trademark oxford has been in existence, it does not enjoy the protection accorded to registered trademarks therefore, it may be hard for the original owners to prevent the dealers of the bicycle business from registering the trademark. After the bicycle dealers have successfully registered the trademark, they can continue using it comfortably without fear of infringement. However, if the original owners had applied for the registration of the trademark, the bicycle owners cannot go ahead and use it without the consent of the owners. If the original owners try to initiate a legal proceeding because of infringement, they may not succeed because they have no legal ownership of the trademark, even though they have used it for 20 years. Unless the original owners apply for registration of ‘oxford’ trademark before the bicycle owners do, the bicycle company may succeed in registering and acquiring full ownership of the trademark.
Consequences of an application to register the smell of a “Desire” perfume
The color, words, signs and smell of a product whose trademark is registered are protected by the trademark act and cannot be duplicated without the owner’s permission. It is therefore illegal for anyone to use a registered trademark without permission as this can attract a legal action against them (Burk and Mark, 2009). The application to register the smell of a ‘desire’ perfume could be declined due to various reasons. As stated in the trademark act of 1994, the registering attorney may fail to register a trademark if there is a possibility of the trademark causing confusion among the public. Moreover, if the product is likely to cause a misunderstanding about its origin and quality, the registering attorney cannot register the product. In the case of trying to register ‘desire’ perfume, the application would be declined because the trademark fails to meet the necessary conditions to pass the verification process. The product is likely to cause confusion among the public because the difference between the new perfume and the old one that has been in the market is very minimal. Adding a bit of spice to the desire perfume is not enough to distinguish it from the perfume that has been in existence and is therefore likely to cause a misunderstanding about the origin and quality of the perfume. The application would therefore be declined.
Consequences of an application to register the use of unusual metallic shade
The most important function of a trademark is to distinguish products and services offered by an individual or a company from those offered by other entities. This helps to keep all products that have a registered trademark unique since duplication is a crime punishable by law (Cornish, 1996). In this scenario, the application to register the trademark of an unusual metallic shade will not be declined. One of the requirements for registration of a trademark is that they need to be unique in the words, symbols, smell, color and even sounds used. The application to register the unusual shade of metallic purple used as wrapping paper for mints produced by Rawntree Ltd would be accepted because the trademark is unique and it meets all the requirements for registration by the attorney. For a trademark to be registered, it should be capable of being graphically represented so that it can effectively serve its purpose. In the case of unusual shade of metallic purple, it does not automatically mean that the unusual shade of metallic purple will be used as the trademark. However, a trademark that is capable of being represented graphically may be used, which would make application for the trademark to be accepted (Miller and Michael, 2000). The use of unusual shade of metallic purple alone is not enough to guarantee Rawntree Ltd the rightful ownership of color as its trademark. The company needs to take another step of registering it as a trademark in order to enjoy full ownership. Since there is no existence of such a trademark, Rawntree will succeed in the registration process.
Conclusion
One can only have full ownership of an intellectual property such as a trademark if it is registered by the relevant authorities (Perelman, 2004). A registered trademark enjoys protection from the law. This means that the trademark can only be used by the rightful owner to distinguish their products from those produced by others in the same field. A trademark is usually unique in terms of the words, phrases, color and smell used, among other qualities. This means that a rival in the field where a certain trademark is used cannot copy an existing trademark in order to sell their product. An unregistered trademark is not fully protected by the law. This means that it possible for another person to use the trademark without fear of prosecution because the rightful owner of the trademark is not recognized. However, if the owner has applied for registration of the trademark and the process is not yet complete, another person cannot be allowed to apply for registration of the same trademark. The process of registering a trademark is not an easy one. The registering attorney has to verify that the trademark is original and does not cause confusion among members of the public. The trademark should also serve the purpose of distinguishing products belonging to one company from those of another company in the same field.
Reference List
Bellis, M., 2012. The Registered Trademark. Web.
Burk, D. L. and Mark, A. L., 2009. The Patent Crisis and How the Courts Can Solve It. Chicago: University of Chicago Press.
Cornish, W., 1996. Intellectual Property. London: Sweet & Maxwell.
Drahos, P. F., 1996. A Philosophy of Intellectual Property. Aldershot: Dartmouth.
Greenhalgh, C. & Rogers, M., 2010. Innovation, Intellectual Property, and Economic Growth. New Jersey: Princeton University Press.
Miller, A. R., and Michael H. D., 2000. Intellectual Property: Patents, Trademarks, and Copyright. New York: West/Wadsworth.
Perelman, M., 2004. Steal This Idea: Intellectual Property and The Corporate Confiscation of Creativity. New York: Palgrave Macmillan.
Schechter, R. E.., and John, R. T., 2003. Intellectual Property: The Law of Copyrights, Patents and Trademarks. New York: West/Wadsworth.
