What's in a mark?

Damion Blair , GUEST COLUMNIST

A trademark, by legal definition, is a distinctive symbol or image, word or words legally registered or established by use as representing a company or product.

In short, it is the mark, by which a company or entity and its products are known.

As individuals, in our circle of friends we often have unique features that garner us nicknames such as 'Bigga', 'Shorty' or 'Slim'.

Whatever the nickname, when one person in the circle refers to another by that moniker, everyone in the circle is aware of whom the reference is being made.

This is the concept behind a trademark. It is the feature by which customers, competitors, and the general public can recognise and distinguish one company from another.

In essence, a trademark is a company's identity in the community in which it does business.

It is also a form of intellectual property and as such, the owner is entitled to certain inherent property rights, including: the right to control the use of the trademark; the right to benefit from the trademark; the right to transfer or sell the trademark and the right to exclude others from using the trademark.

As with any other form of property, the trademark holder may use his mark as he sees fit, subject to the provisions of the Trademarks Act, and take steps to protect his rights from being infringed.

Using a trademark

Trademarks may be used for many purposes but, typically, the primary purpose is to identify the holder's business, products and/or services and to distinguish them from the competition.

A business may use a trademark to identify its product to the consumer as having been made by that business.

Businesses should ensure that their trademark is easily identified so that others wishing to use a similar trademark will realise that it is not available for use. While Jamaican law does not specify a method by which trademarks may be identified, businesses may opt to identify their marks by using the following internationally recognised symbols:

® - to indicate a registered trademark

TM - to indicate a common-law or unregistered trademark

SM - to indicate a common-law or unregistered service mark

A trademark may also be used to obtain profit for the trademark holder or licensor, who may license his trademark to another entity — that is, the holder may allow a third party to use his mark in exchange for monetary compensation.

Where a trademark holder agrees to license his mark he should ensure there are provisions for quality controls. These provisions ensure that the product offered by the licensee is of the same standard and quality as that of the trademark holder. Failure to sufficiently monitor the quality of the goods provided by the licensee could result in a tarnishing of the mark.

Rights in a trademark arise from usage of that mark and can be extinguished by lack of use. Where a trademark holder does not use a mark for a period of three years, the mark can revoked by a third party on the ground of non-use.

Accordingly, a trademark holder should exercise stringent management and control of his trademark.

Rigid control can also help to limit counterfeiting by unfair competitors who would otherwise use the mark to promote their inferior products as those of the trademark holder.

Protecting a trademark

Businesses, just as individuals, have and need to protect their identity. When two or more companies use the same or similar trademarks, confusion occurs in the market. Customers intending to patronise Company A may inadvertently patronise Company B. This not only results in revenue loss for Company A, but if Company B's products and services are subpar, it could also cost Company A its reputation and hard-earned goodwill.

Identity theft does not just occur among individuals. Often, Company B will intentionally use Company A's trademark to profit from Company A's goodwill. Again, this results in revenue loss for Company A and possibly, a loss of customers.

Trademarks can be either registered or unregistered. A mark registered with the Jamaica Intellectual Property Office provides protection by entitling the registrant to exclusive use and control of that mark in Jamaica.

The owner of a registered mark can commence an action in a court of law to prevent the unauthorised use of that mark.

An unregistered mark, also known as a common-law mark, has similar rights. But unlike a registered trademark that is protected without proof of goodwill, an unregistered mark may only be protected in the geographical area in which it is known and thereby acquired goodwill.

Additionally, in order to enforce the protection of an unregistered trademark in a court of law, the claimant will have to commence an action for the tort of 'passing off' against the offender.

To further complicate matters, the claimant will have to prove that:

1) They had goodwill in the mark;

2) That there was a misrepresentation by the offender and;

3) That as a result, the Claimant suffered damage to his goodwill.

It is important to note that not every mark can be registered. Generic terms are not able to distinguish the products and services of a business from the products or services of another business and therefore cannot be protected.

Damion Blair is an attorney with the law firm DunnCox in Kingston. damion.blair@dunncox.com