Atrademark is a symbol that signifies the products exclusivity as a means ofidentifying and referring to product of the kind for which it is registered.Only the proprietor of the trademark is entitles to authorize the marketing of markedproducts and therefore it establishes that the goods have the same trade originthat the trademark signifies. Further, in EEA, at least, the right to firstmarketing of the goods is given to the proprietor under article 7, this meansthe proprietor of the trademark has the right to first market the goods withinEEA. “In relation to trademarks, the specific subject-matter of the industrialproperty is the guarantee that the owner of the trademark has the exclusiveright to use that trademark, for the purpose of putting products protected bythe trademark into circulation for the first time, and is therefore intended toprotect him against competitor wishing to take advantage of the status andreputation of the trademark by selling products illegally bearing thattrademark”[1]
As noted above the trademark signifies that thereis one undertaking (owner of the trademark) which controls the quality and allthe other characteristic of the marked products. It gives a guarantee ofconsistency in the quality and condition of the product to the consumers.Thought this guarantee is not legal guarantee about the quality or any othercharacteristic of the marked products it’s just the guarantee of the tradeorigin. This means that trademark only provides the likelihood that the markedproduct will remain in certain a consistent standard as to the quality andcondition is concerned. Thus guarantee provided by the trademark gives theconsumer a reference point that enables the consumer to identify the productsthat meet their requirement. Lord Nicholls has also included to thislimitation in Scandecor Development v.Scandecor Marketing:
“Inrelying on a trade mark consumers rely, not on any legal guarantee of quality,but on the proprietor of a trade mark having an economic interest inmaintaining the value of his mark. It is normally contrary to a proprietor’sself-interest to allow the quality of goods sold under his banner to decline”[2].
Astrademark gains recognition, it undergoes two stages.
First,consumers awake themselves of the existence and availability of marked productswhen searching for products and connect these products with their ownexperience
Secondly,the trademark gains a reputation in the minds of consumers relating to thelikely quality marked products, which the consumers remembers as it meets theirexpectations of these products based on their collective experience.[3]
The Directive recognizes how these stages canincrease the marketing power of a trade mark through expanding the owner’sexclusive rights in line with its level of recognition on the market. Article5.1 of the directive, states that, the trademark provides the means to identifyproducts on the basis of trade origin; it gives the owner of the trademark theright to prohibit any unauthorized use of the trademark.[4]Article 5.1 extends this core right to the extent that it include signs thatare similar to the trade mark may not be registered or used as it may give riseto a “likelihood of confusion” on the part of the public, which ensures thetrade mark’s quality of distinguishing marked products from others. ‘Likelihoodof confusion’ means that consumers are likely to assume incorrectly that thethird party’s products come from the same undertaking as marked products orhave a trade origin that is economically or organizationally linked to theowner of the trade mark.
Article5.1, therefore, strengthens the legal protection of a trade mark’s capacity toperform its essential function, which is ‘to guarantee the identity of the origin of the marked product tothe consumer or end user by enabling him, without any possible confusion, to distinguish the product or service fromothers which have a different origin’.[5] ECJhas indicated that greater recognition would make the trade mark more‘distinctive’ and that this would increase the likelihood of confusion.[6]In Canon v. MGM, the ECJ concluded:
Sinceprotection of a trade mark depends … on there being a likelihood of confusion,marks with a highly distinctive character, either per se or because of thereputation they possess on the market, enjoy broader protection than marks withless distinctive character.[7]
The Directive also gives the owner of a trademark other exclusive rights to control its use in advertising and otherpromotional material, which further increases its value as a marketingresource.[8]L’Oréal v. Bellure, the ECJ ruledthat a trade mark can perform several functions in addition to its essentialfunction of guaranteeing trade origin, including ones it termed the‘communication, investment or advertising’ functions, and that the Directiveshould protect all of these functions.[9] Asregards the legal protection of these additional functions, Article 5.2 appears to be designed toprotect them. This provision extends the exclusive rights of an owner whosetrade mark has ‘a reputation’ so that the owner is entitled to prohibit a thirdparty’s use of an identical or similar sign ‘where use of that sign without duecause takes unfair advantage of, or is detrimental to, the distinctivecharacter or the repute of the trade mark’. In General Motors v. Yplon,[10] the ECJ ruled that thetrade mark must have achieved a minimum level of recognition to satisfy theprerequisite of having ‘a reputation’.
Inlight of the above said we can say that the trademarks legally performs twoessential function in marketing
1. Itprovides face or identity to the products, which further provides the consumersa reference point to form their express choice.
2. Itcan be used in advertisement and other promotional activity of the markedproducts, for connecting the consumers to source information of the product andthe consumer’s prior experience.
[1]Centrafarm/Winthrop, Rec. ECJ, p. 1183
[2] : [2001] ETMR 800 at [19]
[3] A. Griffiths, An Economic Perspective onTrade Mark Law (Edward Elgar Publishing, 2011) (Blackboard)
[4] Article 5.1provides that the owner of a trade mark ‘shall be entitled to prevent all thirdparties not having his consent from using in the course of trade: (a) any signwhich is identical with the trade mark in relation to goods or services whichare identical with those for which the trade mark is registered’
[5] Hag II [1990] 3CMLR 571 at [13].
[6] Sabel v. Puma[1998] ETMR 1
[7] Canon v. MGM[1999] ETMR 1 at [18]
[8] L’Oréal v.Bellure [2009] ETMR 987 at[51]-[58].
[9] Google Francev. Louis Vuitton Malletier [2010] ETMR 503
[10] General Motorsv. Yplon [1999] ETMR 950.
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