Each country provides in its domestic legislation a set of legal requirements for the validity of each type of IP right. The good news is that, in view of their widespread membership in IP international treaties and conventions, such requirements are more or less the same in all AANZFTA parties.
In order to be valid in ASEAN countries, Australia and New Zealand, a trademark must comply with the following legal requirements:
- Distinctive Character
Trademarks should be capable of distinguishing the goods and/or services of a certain company (or individual/s) from those of other companies (or individuals). The notion of “distinctiveness” is therefore at the core of the notion of trademarks. However, often this concept is not defined in domestic trademark laws, which instead indicate that, in order to be valid, trademarks should not be, inter alia, “merely descriptive” or “generic”.
These notions are based on the famous “principle of SPECIFICITY” (or “speciality”) whereby marks are considered distinctive, descriptive or generic depending on the specific goods and/or services for which the marks are protected. This principle is therefore based on the strong link between the mark and the goods/services that it covers. For information, all goods and services are classified in accordance with an international treaty called “International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement” (in short: “Nice Classification”). It consists of 45 classes: 34 for products and 9 for services. For more information, please see: http://www.wipo.int/classifications/nice/en/
Real life examples might help with understanding the difference between a “distinctive mark” (which means that the mark is valid, strong), a “descriptive mark” (meaning that the mark is non-valid or at least weak) and a “generic mark” (which is obviously non-valid).
For instance, the invented mark PEAR (with a logo representing a pear) would be:
- Distinctive if used for … electronic appliances;
- Generic is used to sell … pears;
- Descriptive for fruit juices.
Obviously, trademarks that have no meaning (such as KODAK®) cannot be descriptive or generic.
The analysis as to whether a proposed mark is distinctive or not has to be carried out using as a reference point the average consumer of that particular product in the country concerned. If the average consumer knows the meaning of the mark and he/she esteems that there is a direct relationship between the meaning/message of the mark and the goods/services covered by the mark, then the proposed mark is descriptive.
However, not all descriptive marks are unlawful. Only marks that are essentially or merely descriptive should be considered as such. Other circumstances may render a partially descriptive mark more distinctive and therefore stronger and valid. By way of example:
- A non-descriptive logo may be added to the word mark;
- The mark may be filed and used in a special script (and not in standard capital letters) or in a special colour (and not in black and white)
Finally, it should be recalled that the level of distinctiveness of a mark is not constant over time. It may increase or decrease, depending on a number of occurrences including the type and frequency of utilization of the mark. In other words, a partially descriptive mark may become more distinctive if used for years in a consistent manner. This phenomenon is called “secondary meaning” or “acquired distinctiveness”. On the other hand, the distinctive level of a mark may also decrease and disappear. This is the so-called “vulgarization” or “genericization” of the mark.
- NOT DESCRIPTIVE
As already explained in the point above, a mark should not merely describe the qualities, characteristics, the origin, the intended purposes, etc. of the products or services covered by the mark itself. By way of example, the following terms might be problematic as almost systematically descriptive:
- Adjectives (such as: cheap, faster, beautiful, future, etc.);
- Laudatory expressions (such as: the best, number one, super, the king of … etc.);
- Geographical terms (the name of a town, village, or place, as this would describe the origin of the products in question).
However, as already mentioned, not all the terms above would automatically render a mark null and void. If coupled with other distinctive terms or logos, the mark may be valid (though not necessarily very strong).
- NOT MISLEADING
A mark cannot mislead the relevant public as to the qualities, characteristics, or origin of the products or services covered by mark itself. In other words, a trademark cannot convey a message that is not true.
By way of example, a geographical term (such as “Mandalay”) might lead consumers to believe that the products come from that place, and if this is not the case, the mark will be misleading as to the origin of the products. Similarly, the same would apply to a mark that hints to the “freshness” of the milk contained in the packaging, while the product consists of powdered milk.
- NOT GENERIC
As already mentioned above, a generic mark is a sign that corresponds to the ordinary term used by the relevant public to name a particular product. No intellectual property law or institution would ever accept to grant exclusive rights to a single company or individual over a generic name, as this would amount to excluding everybody else from using it. By way of example, a producer of shoes could never obtain a trademark on the word “shoes” per se.
- NOT CONTRARY TO PUBLIC ORDER, MORALITY
Trademarks cannot offend the sensitivity of people, their values, their morality, their religion, and cannot be against any domestic legislative text.
By way of example, names of drugs and of weapons, names linked to terrorist organizations and organized crime, words or imagines that are sexually explicit or vulgar may be rejected as trademarks, even if applied for products that are completely lawful if the country concerned (e.g. COCAINE for garments)
NOT identical to a national flag and other State emblems
Nobody should use for commercial purposes as a trademark the name of a country, its flag, or other national emblems, etc. Only the State can decide who is entitled to use such symbols and under what circumstances.
- NOT IN CONFLICT WITH PRIOR RIGHTS
A trademark should not infringe the exclusive rights of owners of prior marks or of other IP rights. This is the so-called “relative grounds” for the refusal of a mark (as opposed to the previous legal requirements that are referred to as “absolute grounds”). In order to find out if a proposed mark is available (i.e. it is “new”) a trademark search should be conducted by using a reliable databank such as:
o ASEAN TMView available at: http://www.asean-tmview.org/tmview/welcome.html. This database is very useful to verify if a proposed mark is available for registration in any of the ASEAN countries (with the exception of Myanmar).
o TMView, available at https://www.tmdn.org/tmview/welcome. This search tool is useful to check the availability of a mark in all EU countries and in numerous other partner offices (please see full list of participating countries at the above internet address).
o WIPO Global Brands database, covering trademarks registered in a wide number of countries parties to WIPO, and available at: https://www.wipo.int/branddb/en/index.jsp.
A trademark is not considered as available if in the same country:
- There are prior identical or similar signs,
- For identical or similar goods and/or services.
The notion of “identical” signs is pretty straightforward, and it does not require much explanation for identical goods/services. On the contrary, some explanations are needed in the case of “similarity” between signs or between goods/services. In particular, two signs/trademarks may be similar from a:
- VISUAL point of view, i.e. when the two marks look alike, because of a number of elements, like colours, shapes, letters, etc.;
- PHONETICAL point of view, i.e. when the two marks sound similar;
- CONCEPTUAL point of view, i.e. when the meaning of the two marks is the same (e.g. the English word “house” and the Khmer term “ptea” have the same meaning and therefore if used as marks, they would be conceptually similar).
On the other hand, two products (or services) can be considered similar if they have the same purpose or the same public; the same channels of distribution or they are inherently linked (like a wheel of a bicycle and a bicycle). They can also be deemed as similar if one can replace the other, should the first not be available.
In order to be validly registered as a patent, an invention must:
- Refer to a patentable subject matter: many countries provide that, for example, discoveries, mathematical and scientific methods, methods for doing business, games, plants and animals are forbidden from patentability. It is therefore advisable to check the precise list of non-patentable subject matters contained in the patent law of the countries where the invention has to be protected.
- Be new: this means that invention cannot be “anticipated by the prior art”. This technical expression in reality simply means that the invention is not new if it was already disclosed to the public anywhere in the world by way of written or oral disclosures. For example, a patent will not be granted because of the lack of novelty if the invention:
- is already covered by another earlier patent (registered or applied for), or
- was described in detail in a conference, a study, an assessment, or
- was simply used by someone somewhere around the world.
In order to find out if an invention is new a “novelty research” should be carried out by a technical specialist. Only if the proposed invention is completely new worldwide, you will be able to obtain a patent in your own country and possibly elsewhere. If, instead, the invention already exists and it is registered in your country, then you can neither register it nor use it (without authorization from the legitimate owner). Finally, if it is registered in other countries, but not in yours, then feel free to use it without any need to ask for permissions or paying money to anybody. Asking an expert to check for you patents’ databases in your area of technology, could be an excellent way to find out what already exists around the world and what you can use free of charge.
- Have industrial applicability: this means that the invention must be useful and capable of being reproduced on a large scale (by any industry, agriculture or fishery).
- Have an inventive step: an invention possesses an inventive step if it cannot be considered as obvious for the “man skilled in the art”. In other words, standing in the shoes of somebody who holds some level of expertise in the relevant technical field, only inventions that represent a real technological advance as compared to what already exists will qualify for patent protection.
- Be fully disclosed: a patent must describe in detail the invention, failing which the patent will not be granted or it can be canceled at any time.
Most countries provide that the legal requirements for an industrial design, whether 2-D or 3-D, are:
- Be New: i.e. if it has not been disclosed to the public, anywhere around the world, by publication, display or simply used in any other way, before the filing date. If you want to find out if a particular design is new or not, you have to carry out an availability search by using tools such as DesignView available at: https://www.tmdn.org/tmdsview-web/welcome (and ASEAN DesignView, at https://www.asean-designview.org/designview/welcome).
- Not dictated essentially by technical or functional considerations: merely functional or technical shapes do not enjoy protection as industrial designs, but if anything, as patents or utility models.
- Not contrary to public order or morality: the particular 2-D or 3-D shape cannot be vulgar, offend people, values and beliefs.
The only legal criterion for protection under copyright is ORIGINALITY. A given creation will therefore qualify for copyright protection if it is the original expression of its author. In other words, there will be no originality if the author has copied somebody else’s work.
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