registering trademark by legalstuff


									                                Intellectual property rights, Part 3:
                                trademarks, collective marks and
                                geographical indications

                                S.K. Matlani is an entrepreneur based in
                                the State of Madhya Pradesh in India. In
                                1985, Matlani set up a small company to
                                manufacture mosquito repellent mats,
                                selling them under the trademark JET.
                                JET repellent mats proved to be success-
                                ful in the market and Matlani was soon
                                competing neck-to-neck with the largest

                                It’s all in the mark
Export Marketing & Management

                                                                                                                                            By Esteban Burrone, WIPO

                                In 1995, one of India’s large industrial groups was looking for     mark in the marketplace has become such a key issue for com-
                                options for entering the mosquito repellent market and entered      panies, particularly exporters operating in distant markets. If
                                into negotiations with Matlani to buy the JET trademark. After      you´re entering an export market, having ´the right trademark´
                                lengthy negotiations, Matlani agreed to sell the JET trademark      is crucial to attracting consumers. But having the right trade-
                                for a reported total of approximately USD 6,500,000. The facto-     mark can mean many things. Here are three key factors:
                                ries and remaining tangible assets remained his and he closed       1 From a commercial point of view a trademark should be easy
                                them down shortly after. Clearly, the only thing the conglome-         to read, write and remember for consumers. It should not
                                rate was interested in was the trademark. The JET trademark            have a negative connotation in relevant foreign languages,
                                had over the years achieved an enviable reputation, gaining the        too.
CBI News Bulletin Page 6

                                trust of many consumers. The large conglomerate did not need        2 From a legal standpoint, your trademark must meet the
                                the factory or the tangible assets: what it needed to get a            necessary requirements for registration. In particular, it must
                                foothold on the market for mosquito repellents was the trade-          be distinctive. For instance, you cannot use the generic name
                                mark 1). This is true for many companies worldwide. A trade-           of the product and the trademark may not be considered
                                mark embodies the reputation and image of a product and is             descriptive, deceptive or contrary to public order or morality
                                the direct link between the company and its clients. A client          and should not be an official state emblem or flag (for more
                                that is satisfied with a given product is likely to come back for      information on legal requirements for registering a trade-
                                more products bearing the same trademark. As a company, a              mark go to ttp://
                                trademark enables you to differentiate your goods and services         making_mark.html). If your trademark fails to meet these
                                from those of competitors. It is also an incentive to invest in        requirements, it may not be registered, which means that in
                                developing a quality product. A trademark appreciated by con-          general you´ll be powerless to stop other companies from
                                sumers is extremely valuable, and, as was the case with JET,           using it.
                                may be your company´s most precious asset.                          3 Your trademark may not be identical or confusingly similar
                                                                                                       to that of another company and many national trademark
                                ´The right trademark´                                                  offices will check this while examining the trademark prior to
                                This is why the selection and adequate management of a trade-          its registration. To check whether this is the case, you can
  conduct trademark searches in foreign countries. Some               How to register
  national trademark offices have an online trademark data-           There are essentially three ways of registering a trademark
  base for this purpose. For a more exhaustive investigation of       abroad.
  possible similarities to other marks, it is generally advisable     1 You can go directly to a national trademark office and file
  to hire a trademark expert.                                           your trademark application in the relevant language. You will
                                                                        need to pay the national fees, and, in many countries, to hire
Registration                                                            a local trademark agent.
Having the right trademark, like having a good car or a nice          2 Use a regional system for the protection of trademarks. For
house, is worth little without the necessary papers to prove your       registering Community Trademarks in the European Union
company´s ownership. To make sure you have exclusive rights             you can go to the regional Office for the Harmonisation of
over a trademark in a foreign market, you must apply for regis-         the Internal Market (OHIM). It is based in Alicante, Spain.
tration with the national (or regional) trademark office, pay the       The Community Trademark provides exclusive rights in the
applicable fees and obtain a certificate of registration.               25 EU member countries.
By registering the trademark, your company acquires exclusive         3 Companies based in member countries of the Madrid
rights to stop or prevent others from using the same or a con-          System for the International Registration of Marks can avail
fusingly similar trademark for identical or similar goods and           themselves of this system to significantly reduce costs and
services. Note that the exclusivity applies to identical or similar     limit formalities for trademark registration in foreign coun-
goods and services and not to any goods or service. This means          tries. Under the Madrid system, you can submit a single
that if you´ve registered a trademark for a given class of goods        application form in one language, paying one set of fees for
and services – say class 15 of the International Classification of      protection in up to 78 member countries. You don´t have to
Goods and Services, which is for musical instruments – another          appoint a local lawyer to handle the registration unless your

   Having the right trademark is nothing without the necessary
   papers to prove your company’s ownership

company will probably be able to use an identical or similar            trademark application is refused in a given country and you
trademark to sell food products or car engines without                  wish to respond to the decision. Another advantage of this
infringing on your rights (for more information on this matter          system is that you can make changes to registration details,
go to                    such as an address, and renew the trademark with a single
                                                                        procedure rather than submitting multiple forms for the
A Cuban example                                                         trademark offices of different countries. The cost savings
The story of Cuban textile company Alba Confecciones illus-             achieved in this way can be significant. For more information
trates the importance of registration. In 2001, the company             on the Madrid system and a list of Member States go to:
inquired at the trademark office about the procedures for pro-
tecting the name of the company, which had been used as a

                                                                                                                                             CBI News Bulletin 2006
trademark for some of its textile products for the previous six       Collective marks
years. The company was surprised to find out that it had no           While trademarks are key elements of the marketing strategy of
exclusive rights, as the trademark had not been registered 2). Not    any company, small companies may have difficulty gaining
only that, but a foreign company had registered the trademark         recognition for their mark given strong competition from other
Alba in Cuba under class 25 of the International Classification       producers. The solution in such cases may be to join hands
of Goods and Services, which relates to clothing, footwear and        with other producers and use a collective mark. This option
headgear. This situation presented a serious problem.                 may be particularly interesting if you´re seeking to export to
Eventually, Alba Confecciones was lucky: it discovered that the       highly competitive markets.
foreign company had not been using the trademark for three            Anybody living in or near Peru who has tasted the chirimoya
years or more, which under Cuban law makes it possible to             fruit, a tropical fruit that grows in the Andean region, knows
cancel a registration. Having learned a lesson, the company is        that the chirimoya from the Cumbe Valley is very special. Local
                                                                                                                                             May/June Page 7

now looking into registering its other trademarks nationally as       villagers realised they could exploit the distinctive reputation of
well as in its main export markets 3).                                the Cumbe fruit by registering the Chirimoya Cumbe as a col-
                                                                      lective mark. They gave it a characteristic logo and all producers
It is not just SMEs that run into trouble for not registering their   agreed to abide by a set of internal regulations. The collective
trademarks. Countless companies have run into trouble after           mark proved a doorway to success: producers were able to use
neglecting registration in a foreign market. In what is probably      it to promote their product in the main wholesale markets in
one of the most famous cases, a large sportswear multinational        the capital and beyond, thus strengthening the product´s repu-
found that its trademark had been registered by a different           tation. The collective mark registration is owned by the village
company in Spain and could not use the mark in its advertising        of Santo Toribio de Cumbe 4).
campaigns during Spain´s 1992 Summer Olympics. The risk is            Collective marks can be a very powerful legal instrument for
two-fold: firstly you run the risk of losing sales to competitors     groups of producers, business associations and cooperatives in
and potentially tarnishing your trademark´s reputation.               any sector. They enable small businesses to benefit from the
Secondly, you may be accused of infringing on the trademark           collective reputation of a product and from economies of scale.
rights of others, thus compromising your entire marketing             Collective marks are often used to promote products characte-
strategy in a given market.                                           ristic of a particular region. In such cases, the creation of a col-
                                                                      lective mark not only helps producers to market the product
                                domestically and internationally, but also
                                provides a framework for cooperation
                                between local producers. Part of the suc-
                                cess of collective marks, in fact, is the
                                development of product standards and a
                                common strategy 5). It is important to
                                note that the Madrid System described
                                above may also be used to register collec-
                                tive marks abroad.

                                Geographical indications
                                Geographical indications are another
                                powerful tool for producers. Depending
                                on national legislation, they are also
                                known as appellations of origin. A geo-
                                graphical indication can be granted to a
                                product whose reputation, quality or
                                other characteristics can essentially be
                                attributed to its geographic origin.
                                Geographical indications are usually
                                applied to agricultural products whose
                                characteristics are determined by
                                specific local climatic or soil conditions.
                                Famous examples include the Mexican
                                drink Tequila and India´s Darjeeling Tea,
                                which currently gives employment to
                                over 50,000 people in India 6). The
                                Chirimoya Cumbe, currently registered
                                as a collective mark, is also likely to
                                acquire a geographical indication in the
                                course of 2006. Many other products
                                from developing countries may qualify
                                and numerous countries are making
                                efforts to register geographical indica-
Export Marketing & Management

                                tions in order to promote the economic
                                development of regions, communities or

                                For a further introduction to trademarks
                                for SMEs go to

                                1 For a full case study go to:
                                2 Cuban legislation, like that of many other
                                  countries worldwide, requires a trade-
CBI News Bulletin Page 8

                                  mark to be registered under the national
                                  trademark law for obtaining trademark
                                  rights in its territory.
                                3 For a full case study go to
                                4 For a full case study go to
                                5 Most trademark offices require appli-
                                  cants for collective marks to submit a
                                  copy of their internal regulations.
                                6 For a full case study go to

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