Giving your brand a hand
Ólafur Ragnarsson of Patice IP Legal offers tips for protecting a brand
Trademark and brand protection can be obtained through registration at the Icelandic Patent and Trademark Office (IPTO) or by use. There is no use requirement to obtain trademark right through registration. There is a use requirement before establishing trademark rights through use.
Trademarks and brands
A common synonym for trademark is brand name. Coke and Pepsi are well-known brands for soft drinks. Toyota and Mercedes-Benz are trademarks (brand names) for cars. Trademarks or brand names identify the product as coming from a particular company. Consumers may not know the name of the company, but they know that products bearing the same brand originate from a single source.
While a brand name is always a trademark, a trademark is not always a brand name. Trademarks can consist of variety of words and symbols, for example: a design such as Nike’s swoosh design, a product shape such as the Coca-Cola bottle, or a slogan such as ‘Just Do It’ for the Nike product line. The critical element in all of these trademarks, be they words, designs, shapes or slogans, is that they identify and distinguish one product from another.
Trademarks help consumers to select goods. By identifying the source of the goods, they convey valuable information to consumers at lower costs. Easily identifiable trademarks reduce the costs that consumers incur in searching for what they desire, and the lower the costs of search, the more competitive the market. The use of a trademark, does not necessarily, as a matter of law, impart that the articles on which it is used are manufactured by its user. It is enough that they are manufactured for it, that it controls their production, or that they pass through it in the course of trade, and that it gives to them the benefit of its reputation or name and business style.
Trademarks are also symbols of quality. The familiar Black & Decker trademark on tools assures consumers that they are getting Black & Decker-quality products.
This quality assurance function requires the trademark owner to maintain consistent quality standards so that consumers get what that they expect. If quality control is not maintained, the consumer is deceived and the trademark owner stands to lose its trademark.
Finally, trademarks are symbols of goodwill. The value of this good will increases with length of use, advertising and sales.
Trademarks have developed tremendous goodwill. The universal goodwill for such famous marks as Pepsi is priceless.
Benefits of registration
The benefits of registering trademarks are many. They provide prima facie evidence of the validity of the registered mark and registration, the registrant´s ownership of the mark and the exclusive right to use the mark in commerce in connection with the specified goods or services.
They also provide: constructive notice of the registrant´s claim of ownership of the mark; the right to bring suit in court; statutory remedies such as damages and criminal penalties in counterfeit cases; the ability to bar importation of goods bearing infringing trademarks by depositing the registration with customs; and rights under the Paris Convention, including convention priority rights on foreign filings and the right to register abroad based upon registration in Iceland.
Content of application for registration
Applications must contain multiple elements, including: identification of the applicant; identification of the trademark (maximum 8x8cm with two accompanying copies); a description of goods and services (class heading is not enough); designation of class (Nice Classification System for Goods and Services); and payment of an official fee.
If the holder can prove that it was the first to use a certain trademark, it obtains the rights of the mark concerned, as long the holder proves that the use prevails. Obtaining trademark rights through use is substantially the same as obtaining trademark rights through registration.
On the other hand, the holder has to prove use of the trademark concerned but there is no use requirement to obtain trademark registration.
If the proprietor of a registered trademark has not used the trademark within five years from registration, or use has not occurred during a continuous five-year period, the registration may be invalidated by administrative decision through the IPTO.
Trademark protection through use is not as strong as trademark protection obtained through registration. Protection through use can never obtain strong trademark protection as, for example, a registered trademark, which have arbitrary/fanciful properties (the strongest of trademarks).
The question of when trademark protection through use is established depends on estimation and the complexity of the case. Generally speaking, proven use of at least five times could establish trademark protection.