1. INFO 442: INFORMATION
POLICY AND INTELLECTUAL
PROPERTY
Senait.s
(Bsc,Msc)
04/12/14 1

2. Chapter six: Trade Marks
• Basic Trade Mark Law
• Trade Mark Acts
• Use of Others' Trademarks
• Use of Others' Trademarks as a Fan
• Use of Others' Trademarks as a Critic
• Trade Secrets or Confidential Information
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3. Basic Trade Mark Law
• What is a Trade Mark?
• Different Laws defined trade mark in different ways, albeit
similarities in the purpose it is meant to achieve.
• The world Trade Organization (WTO) defines it as: Any sign
or any combination of signs capable of distinguishing the
goods or services of one undertaking from other;
undertaking shall be capable of constituting a trade mark.
Such sign, in particular words including personal names,
letters, numbers, figurative elements and combination of
such signs shall be eligible for registration as trade mark.
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4. Basic Trade Mark Law cont”
• British trade act of 1994 defines trade mark as: Any sign
capable of being represented graphically and which is
capable of distinguishing goods or services of one
undertaking from those of others.
• A trade mark may, in particular consist of words including
personal names design, letters, numeral, or the shape of
goods or their packaging.
• The Ethiopia proclamation No 501/2006 for trade mark
registration and protection under article 2 (12) defines
trade mark as:
• Any visible sign capable of distinguishing goods or services
of one person from those of other persons. 4

5. Basic Trade Mark Law cont”
• It includes design, letters, numerals, colours, or shapes of
goods or their packaging or the combination there of.
• The emphasis of definitions are on sign and different forms
and secondly, must be capable of distinguishing one
company's products and services from all other similar
products and services of another company.
• But seems to exclude sounds as a distinguishing factor
among one another company.
• However, for purposes of our lecture, Trade mark means
any word, symbol, design, device logo or slogan that
identifies and distinguishes one product or service from
another. 5

6. Basic Trade Mark Law cont”
• Used or proposed to be used in relation to goods and some
person having, the right either as proprietor or as
registered user to use the mark, whether with or without
any indication of the identity of that person in relation to a
certification trade mark. It is a mark registered or deemed
to have been registered as a certification trade mark.
• This definition is of fundamental importance in setting the
limits of the trade mark registration system. It requires a
connection in the course of trade between the proprietor
and goods and that the use is in relation to goods.
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7. Basic Trade Mark Law cont’
• Trade marks serve three important purposes; they are to:
• i. identify the origin of the product;
• ii. provide an assurance of quality; and
• iii. create consumer loyalty (known as good will).
• Although, the rationale for the trade mark is as mentioned
above, in the Legal systems point of view as to afford
protections to businesses' trade mark and there by the
hard won good will.
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8. Basic Trade Mark Law
• There are justifications for the protection of trade marks.
1. Marks are very valuable for intellectual property because
they become associated with quality and consumer
expectation in a product or service.
Some goods become almost synonymous with their (trade
mark) Eg…the soft drink coca-cola coupled with intensive
advertising company, the utility of marks to their owners as
marking weapons is plain to see and trade mark right
usually will be vigorously asserted and defended.
2. Economic value of symbolism in marking. E.g the value of
the coca-cola trade mark must be immerse when one
considers the size of worldwide sales in what could be
deserted as a beverage based on a formula for exceptional
syrup.04/12/14 8

9. Basic Trade Mark Law cont”
• Symbolism here is also reinforced by the shape of the coca-
cola bottle, which was designed to prevent the dissipation
of the company image resulting from the variety bottle
made.
• Trade marks can be seen as serving two purposes:
– to protect business reputation and goodwill and,
– secondly, to protect consumers from deception, that is to prevent
the buying public purchasing inferior goods or services in the
mistaken belief that they originate from or are provided by
another trade.
• As a form of consumer protection this area of law has been
an effective weapon against counterfeit and inferior goods.
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10. Basic Trade Mark Law cont”
• However, as far as the control of the use of mark in the civil
courts is concerned, the action lies with the proprietor the
mark and consumers are protected indirectly through the
self interest of those with property rights in trade marks.
• The trademark may appear not only on the goods
themselves but also on the container or wrapper in which
the goods are sold.
• When used in connection with the marketing of the goods
the sign may appear in advertisements, Eg, in newspapers
or on television, or in the windows of the shops in which
the goods are sold.
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11. Basic Trade Mark Law cont”
• In addition to trademarks identifying the commercial
source of goods or services, several other categories of
marks exist.
• Collective marks are owned by an association, such as an
association representing accountants or engineers, whose
members use the mark to identify themselves with a level
of quality and other requirements set by the association.
• Certification marks, such as the Wool mark, are given for
compliance with defined standards, but are not confined to
any membership.
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12. Basic Trade Mark Law cont”
• A trademark used in connection with services is called a
service mark. Service marks are used Eg, by hotels,
restaurants, airlines, tourist agencies, car-rental agencies,
laundries and cleaners.
• All that has been said about trademarks applies also to
service marks.
• Broadly speaking, a trademark performs the following four
main functions.
• These relate to the distinguishing of marked goods or
services, their commercial origin, their quality and their
promotion in the market place:04/12/14 12

13. Basic Trade Mark Law cont”
1. To distinguish the products or services of one enterprise
from those of other enterprises.
• Trademarks facilitate the choice to be made by the
consumer when buying certain products or using certain
services.
• The trademark helps the consumer to identify a product or
service which was already known to him or which was
advertised.
• The distinctive character of a mark has to be evaluated in
relation to the goods or services to which the mark is
applied. 13

14. Basic Trade Mark Law cont”
• Eg, the word "apple" or the image of an apple cannot
distinguish apples, but it is distinctive for computers.
Trademarks do not only distinguish products or services as
such, they distinguish them in their relationship to an
enterprise from which the products or services originate.
2. To refer to a particular enterprise, not necessarily known to
the consumer, which offers the products or services on the
market. Thus trademarks distinguish products or services
from one source, from identical or similar products or
services from other sources. This function is important in
defining the scope of protection of trademarks.
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15. Basic Trade Mark Law cont”
3. To refer to a particular quality of the product or service for
which it is used, so that consumers can rely on the
consistent quality of the goods offered under a mark.
• This function is commonly referred to as the guarantee
function of trademarks.
• A trademark is not always used by only one enterprise,
since the trademark owner may grant licenses to use the
trademark to other enterprises.
• It is accordingly essential that licensees respect the quality
standards of the trademark owner.
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16. Basic Trade Mark Law cont”
• Moreover, trading enterprises often use trademarks for
products that they acquire from various sources.
• In such cases, the trademark owner is not responsible for
producing the products but rather (and this may be equally
important) for selecting those that meet his quality
standards and requirements.
• This argument is supported by the fact that even where the
trademark owner is the manufacturer of a particular
product, he may frequently use parts which have not been
produced by him, but which have been selected by him.
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17. Basic Trade Mark Law cont”
4. To promote the marketing and sale of products, and the
marketing and rendering of services.
• Trademarks are not only used to distinguish or to refer to a
particular enterprise or a particular quality, but also to
stimulate sales.
• A trademark that is to fulfill that function must be carefully
selected. It must appeal to the consumer, create interest
and inspire a feeling of confidence.
• That is why this function sometimes is called the appeal
function.
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18. Basic Trade Mark Law cont”
• Thus, the disjunction between a trade mark and
a property mark is that where as the former
denotes the manufacture or quality of the goods
to which it is attached, the later denotes the
ownership in them in other words, a trade mark
concerns the goods themselves while a property
mark concerns the proprietor.
• A property mark attached to the movable
property of a person remains even if part of such
property goes out of his hands and ceases to be
his.
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19. Trade Mark Acts
Scope of Trade Mark Act:
• The Act has codified the law relating to Trade and
merchandise marks and is a comprehensive piece of
legislation dealing with the registration and protection of
trade marks and criminal offences relating to trade marks
and other markings in the merchandise.
• Under the Act registration of trade marks is not compulsory
and as regards unregistered trade marks, some aspects are
governed by the Act while others are still based on
common law.
• The Act also makes provisions where under registered
proprietor of a trade mark can permit any person to use
the mark as a registered user.
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20. Trade Mark Acts cont”
• The terms "trademark" and "mark" are commonly used to
refer to both trademarks and service marks.
• Trademark rights may be used to prevent others from
using a confusingly similar mark, but not to prevent others
from making the same goods or from selling the same
goods or services under a clearly different mark.
• Trademarks which are used in interstate or foreign
commerce may be registered with the Patent and
Trademark Office.
• Trademark laws allow businesses to protect the symbolic
information that relates to their goods and services, by
preventing the use of such information by competitors.04/12/14 20

21. Trade Mark Acts cont”
• To receive trademark protection, a mark must be
distinctive.
• Distinctive generally applies to any coined or fanciful word
or term that does not closely resemble an existing mark.
• No mark will receive trademark protection if it is a common
or descriptive term used in the marketplace.
• To receive trademark protection, a mark must be used in
the marketplace.
• If two or more marketers claim ownership of a certain
mark, the first user of the mark will usually receive the
protection.04/12/14 21

22. Trade Mark Acts cont”
• However, if the mark is known only in a limited geographic
area, it may not receive protection in areas where it is
unknown to consumers.
• Infringement occurs if a mark is likely to cause confusion
among consumers.
• In determining whether confusion is likely, the court
examines a number of factors;
 including the similarity between the two marks in
appearance, sound, connotation, and impression;
 the similarity of the goods or services that the respective
marks represent; the similarity of the markets;
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23. Trade Mark Acts cont”
 whether the sale of the goods or services is inspired by
impulse or only after careful consideration by the buyer;
 the level of public awareness of the mark; whether
shoppers are actually confused;
 the number and nature of similar marks on similar goods
or services;
 the length of time of concurrent use without actual
confusion on the part of shoppers; and
 the variety of goods or services that the mark
represents.
23

24. Trade Mark Acts cont”
• Defenses to infringement include fair use and collateral
use.
• Fair use occurs when the second user, or repossessor, uses
a protected mark in a nonconspicuous way to identify a
component of a goods or service.
• For example, a restaurant can use a protected mark to
advertise that it serves a particular brand of soft drink
without infringing the mark.
• The restaurant cannot, however, identify itself by the mark
without infringing the mark.
• Collateral use is use of the same mark in a different
market.04/12/14 24

25. Trade Mark Acts cont”
Eg, assume that a tree surgeon has received trademark
protection for the mark Tree Huggers.
• This protection may not prevent a business that sells
logging boots from obtaining the same mark.
• However, if the mark for the boots is written or otherwise
appears with the same defining characteristics as the mark
for the tree surgeon, it risks being denied trademark
protection, depending on whether it can be confused by
consumers.
• Remedies for infringement of a protected trademark
consist of damages for the profits lost owing to the
infringement, recovery of the profits realized by the
infringer owing to the infringement, and attorneys' fees.
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26. Trade Mark Acts cont”
• A trademark holder may also obtain injunctive relief to
prevent infringement.
• The owner of a registered trademark has an exclusive right
in respect of his mark.
• It gives him the right to use the mark and to prevent
unauthorized third parties from using the mark, or a
confusingly similar mark, so as to prevent consumers and
the public in general from being misled.
• The period of protection varies, but a trademark can be
renewed indefinitely on payment of corresponding fees.
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27. Trade Mark Acts cont”
• Trademark protection is enforced by the courts, which in
most systems have the authority to block trademark
infringement.
• The registration covers the Trade Names and Geographical
Indications.
• For the trade names, it is a category of industrial property,
which covers commercial names and designations.
• A commercial or trade name is the name or designation
that identifies an enterprise.
• In most countries, trade names may be registered with a
government authority.04/12/14 27

28. Trade Mark Acts cont”
• However, under Article 8 of the Paris Convention for the
Protection of Industrial Property a trade name must be
protected without the obligation of filing or registration,
whether or not it forms part of a trademark.
• Protection generally means that the trade name of one
enterprise may not be used by another enterprise either as
a trade name or as a trade or service mark; and that a
name or designation similar to the trade name, if likely to
mislead the public, may not be used by another enterprise.
• In the case of a geographical indication, it is a sign used on
goods that have a specific geographical origin and possess
qualities or a reputation that are due to that place of origin.
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29. Use of Others' Trademarks
• Although there is a nominative fair use defense usually
protecting certain uses of another's mark, it is basically not
a good idea to use another's trademark without
permission.
• Recently Ticketmaster Group Inc. filed suit against
Microsoft, whose "Seattle Sidewalk" web site contained
links allowing users to bypass Ticketmaster's home page.
• Ticketmaster disapproved because they receive advertising
revenue for advertisements on the home page; the
bypassing reduced the value of the home page
advertisements.04/12/14 29

30. Use of Others' Trademarks as a
Fan
 A fan is a lover of a particular product. For example a Liverpool
football fan.
 The problem: a fan for your company or product is so enthused
that the fan creates a web site to pay tribute, but inevitably
there appears on the site your intellectual property, perhaps
your trademark (or some copyrighted material).
 The down side is, if you do not take some action to protect your
trademark(s) (and copyrights), you could lose this property, but
who wants to alienate (and perhaps lose) dedicated
enthusiastic fans?
 This is especially true on the internet where the alienation
could very quickly spread.
 04/12/14 30

31. Use of Others' Trademarks as a
Fan
• While there are certainly sufficient legal weapons
to stop trademark (and copyright) infringement,
perhaps approaches are possible which will
eliminate the infringement without alienating the
infringer.
• For example, one could create a library of files
with materials which are licensed free of charge
with appropriate restrictions and removal rights.
In cases where some action is necessary a gentle
method may be the most effective.
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32. Use of Others' Trademarks as a Critic
• A critic is a situation where one compares products for
quality identification.
• You may find at some internet sites the use of a
trademark in connection with critiques of products or
services associated with the marks.
• Generally this is not an infringement because it is not in
connection with the sale of goods and because it does
not cause confusion as to the source of the goods and
services.
• Such a critique site may have other legal problems
(defamation for example), but usually not trademark
infringement.
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33. Trade Secrets or Confidential
Information
• Trade secrets or confidential information refer to the
exclusive and valuable information kept and managed by
an organization without being discovered or disclosed.
• This is generally referred to as a formula, pattern,
compilation, program, device, method, technique or
process that is used in one's business, and has independent
economic value that provides an advantage over
competitors who are not aware of it or use it.
• Under most circumstances, a trade secret is lost once it is
independently discovered.
• A trade secret law is conferred on those businesses who
manage to keep valuable information to themselves the
competitive advantage of exclusive access to that
information.04/12/14 33

34. Trade Secrets or Confidential
Information
• It is arguably tort law, rather than property law, but since
the subject matter of the secret is often identical to the
subject matter of the patent or copyright, its designation or
classification in the United States is under the intellectual
property rights.
• Protecting trade secret information can be particularly
important when the internet is involved for at least two
reasons:
1. The internet provides a communications path which people
can use to obtain proprietary information; and
2. Proprietary information accessible over an internet
connection can be copied in large quantities very quickly.04/12/14 34

35. Trade Secrets or Confidential
Information
• For employees, customers, suppliers, and others who may
access organizational data, sufficient steps must be taken
to restrict access only to data needed by specific individuals
or groups. Whenever possible, confidentiality and
nondisclosure agreements should be executed.
• Non-competition agreements can also be effective
whenever and wherever allowed by law.
• These protections are especially important for those
companies who utilize intranets and extranets.
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