Trademarks

A trademark is a sign used to distinguish one’s goods/service from the goods/service of another entity. Trademarks must be distinctive and not deceptive. They must also not be descriptive.

Distinctive means that by its very nature it must be able to distinguish goods and services, while a deceptive mark claims a quality it does not have. A great example of a distinctive trademark is owned by Amazon.com: an arrow which stretches from A-Z while simultaneously forming a smile.

Why are they important?

Trademarks are valuable assets for a business as they are a form of branding: a brand becomes easily identifiable to consumers in any market it’s available. As a business/brand grows, trademarks become more recognizable and familiar to consumers, making it easier for a brand to be distinguished/noticeable in a crowd of other competitors' products and services.

Trademarks’ added advantage is that it leverages marketing a business. As the mark becomes easily recognisable, it can influence consumer’s buying habits. For example, consider products and services from Apple, Microsoft and Google - some of the most valuable and distinctive brands in the world. Consumers relate their brand and products with great quality and reliability and thus brand loyalty is built.

It is important to protect the trademark of a business/brand to prevent someone else from using it. Therefore, a trademark registration gives the owner of the mark the exclusive right to use the mark in relation to the goods/services it is associated with.

In accordance with legislation, someone infringes a registered trademark when it is used without the consent of the owner of the mark in relation to goods/services similar to those for which the mark is registered, and the mark used is either similar or identical to the registered trademark.

Types of Marks

Types of marks that can be registered are certain distinctive words such as Levi’s or Coca-Cola and word combinations. Three dimensional marks such as shapes can also be registered. Notable trademarked shapes are Toblerone and even Hershey’s Kisses. Some famous sound marks that have been trademarked are Nokia’s iconic default ringtone and Homer Simpson’s catchphrase “D’oh”.

Even colours are capable of being registered trademarks. In the fashion industry, famous brands have successfully registered a colour as a trademark: Tiffany’s iconic blue shade, and the colour red found on the soles of Christian Louboutins shoes.

The Madrid Protocol

In October 2020, Trinidad and Tobago joined the Madrid System, which then entered into force in January, 2021.

What is the Madrid System?

This is an international trademark registration system which makes it possible for an applicant to apply for trademark protection in multiple member territories (of the System) by filing one application.

Instead of filing multiple applications in each IP office of a country, the opportunity to attain multinational protection is made easier and convenient with one application, and paying one set of fees in one language through a centralised system. Each IP office of the country where you want a mark protected in (designated contracting party) will examine the application using their own local laws to determine whether the application is accepted.

Disclaimer: This blog post and website contains general information for educational purposes only and should not be construed as or substituted for legal advice. If you require specific legal advice, please contact a suitably qualified attorney.