Presentation 3

Right. The protection of trademark law has been recently conceded to be the protection of the psychological functions of trademarks. In this presentation about trademark law I would like to give you an overview of what trademark law is about, why it’s important, and how we protect trademarks in the marketplace. The points I will be addressing are, what is a trademark and how the concept of a trademark has evolved over the course of time. Why we think, and the law concedes, trademark law to be important, and trademark in particular, why the protection is fundamental for the functioning and the smooth running of the market. And finally, I’ll be looking at how, in the market place, trademarks are protected by courts and by the judges.

So let me turn to my first point. “What is a trademark?” is a question that all practitioners and all lawyers always ask themselves before turning to the question of infringement. Infringement is a point I will be addressing in the third point, now, I’ll be coming to that later on. At this point, let me just say that a trademark is any sign that may function as an identifier of the origins of goods and as well as some sort of distinguisher that will tell the difference between some goods from other goods. That is the origin of some goods from one trader from another trader. To illustrate my point I would like to give you an example of Nike: as a word, Nike as a sign, and Nike as a slogan. All these three forms of a trademark are protected in different way and in different extent but they are all recognized by the law. So at this point I would like to say a few words about what is not a trademark and should not be confused with a concept of a trademark. The first one is a copyright. The second one is the concept of a patient, and the third one is the concept of a design. Each of these rights is independent in its own right and should be distinguished from the rest. The first one, copyright, is a right used to encourage art and literature and the production of books, and for this particular one we’ve got a different test which is that the work claiming to be protected should be original, it should have some creativity.

For a patent to be protected, we should be looking at whether or not the thing to be protected is or has been invented and is new. So at this point you can see that there is a big difference between saying “I’ve got a copyright” or saying “I’ve got a patent”. This is an invention, this is a creation. This is new, and this could be taken from already existing elements in nature. And the third one, which sometimes overlaps with the other rights, is a design. A design could be something that is the outside appearance of a product, for example or a particular drawing, in the case of the fashion industry, for example. So, enough about the definition of a trademark and the difference between a trademark and other intellectual property rights.

Now let’s move on to why we protect trademarks in the market place. At this point, I would like to draw your attention to the fact that trademark law is mainly concerned with the protection of consumers and the information that consumers get in the market place when they make purchasing decisions. Originally, and I’m talking about going back in time about a century ago, trademark law would always be concerned with the protection of the origin of the goods when they reached the consumer. Indirectly, trademark law also protected the traders that put the goods on the market, and the main protection was, if the consumer is not actually misled, right, then the trader should not be given an extra right. Over the past couple of years, protection has been moved from the main cornerstone, which is consumers, to traders, but that is a different point which I may be addressing in a minute.

Now this brings me down to my third point, which is infringement. Just as the consumer has been the cornerstone of trademark protection, so has confusion, on the part of the consumer, has always been regarded as a cornerstone of protection. The question of whether or not the consumer is confused is relevant to whether or not you‘ve got a right and you have a claim against another trader. However, the point of confusion, the element of confusion has been also expanded over the course of years, and now we’ve got different sort of confusion. The more relevant, for example is origin confusion, and then affiliation confusion, and then sponsorship confusion. That’s is not only the consumer thinks that the goods come from another manufacturer or the same manufacturer, but also if the consumer thinks that the manufacturer has endorsed … or another trader is affiliated with those goods on which the mark appears.

So, to summarise the three points I have made, let me just say that we’ve looked at the concept of a trademark and we’ve attempted to differentiate it from other intellectual property rights. Then we looked at why we are concerned with trademark law and on this point we looked at two main elements which are consumers and information. And finally on the question as to how we protect trademarks, we’ve looked at the main point, which is infringement and the cornerstone of infringement is confusion. So I hope that this overview of trademark law has given you a very important insight into the protection of trademarks and that might actually excite you and you might have found it a bit thought-provoking. Thank you very much for listening, and, please, if you have any questions, do ask. Thank you.