Function of a trademark – Essay
A trade mark is a way for one party to distinguish themselves from another. In business, a
trade mark provides a product or organization with an identity which cannot be imitated by its
competitors.
According to section 1(1) of the 1994 Act, a trademark is ‘any sign capable of being
represented graphically which is capable of distinguishing goods or services of one
undertaking from those of another’.
• A trade mark conveys messages concerning the qualities or particular characteristics
of the goods or services which it covers, such as luxury, lifestyle, exclusivity,
adventure, youth.
• A mark has then an inherent economic value which is independent of and separate
from that of the goods and services for which it is registered.
• These messages are conveyed, by trademarks with reputation and confer on it
significant value which deserves protection because the reputation of a mark is the
result of considerable effort and investment on the part of its proprietor.
how far the UK courts and the European Court of Justice (ECJ) have recognised this
“inherent economic value” of registered trade marks?
Trader:
• Image/reputation
• Potential to develop ‘brand loyalty’, monopoly
• Has to be balanced against need to preserve competition
Consumer:
• Association of product with quality/service
• Protection against confusion with inferior products
Origin
Where the goods have come from?
1. Geographical origin vs commercial origin
2. TMs invalid if they cannot do this, e.g.
◦ ELVIS PRESLEY Trade Marks (1999)
◦ JANE AUSTEN Trade Mark (2000)
◦ DIANA, PRINCESS OF WALES Trade Mark (2001)
3. ‘Essential function is to guarantee identity of the origin of marked goods’
Arsenal FC v Reed (No.2)
Guarantee of quality
Trade mark sends out messages of quality to consumer, e.g.
Courts have upheld ideas of quality: See;
Spalding v Gamage / Hag II (courts have agreed)
Trader:
• Image/reputation
• Potential to develop ‘brand loyalty’, monopoly
• Has to be balanced against need to preserve competition
Consumer:
• Association of product with quality/service
• Protection against confusion with inferior produ...
