Introduction
It is becoming increasingly difficult to enforce any trade mark related law in this digital environment. This has remained to be one of the major demands of the Anti-Counterfeiting Trade Agreement (ACTA). This is the body presented with the mandate of enforcing the Intellectual Property Law (IPL). An Intellectual property law is that faction of law that controls the claim and utilisation of creative works. This includes protection of copyrights, industrial patterns, royalties, geographic indications, trademarks and patent law. All of them are interested in a variety of aspects. This paper will analyze the trade mark law.
History of the Intellectual Property Law
The necessity of the creation of the intellectual property law was recognized during the Paris convention in 1883. Countries realized that they are losing a lot economically through piracy. They strived to find a way of correcting this problem and thus the Intellectual Property Law. It is estimated that countries were losing billions of shillings through piracy and such like activities (World Intellectual Property Organization (a), 2008). Most countries also realized that a lot of creativity and invention is going to waste. This was a common problem throughout the whole world. When countries created laws specific to their countries they could not work. Consequently, all countries signed a treaty during the convention in a bid to protect personal interests. This was developed progressively, and later the law was gazette in the Universal Declaration of Human Rights.
Overview of the Trademark Law
A trademark is simply a word, a symbol, or even a phrase that is employed as a way of identifying a specific seller or manufacturer’s products. A trademark aids in distinguishing similar items and/ or products from that of another manufacturer’s (Silva, 2010). A typical and common example in this case is the popular trademark "Nike”. This trademark is distinguishable, and can be used to identify Nike sneakers from other sneaker manufacturers. Similarly, there are other trademarks such as; the drink Coca-Cola and Nescafe. These are symbols used in identifying that particular product from others. In instances where the symbols or marks are utilized in the identification of services, they are typically known as service marks. A paragon in this case is “Jiffy Lube”. They are treated, and they behave similar to trade marks.
Under the Intellectual Property law, trademark protection does not simply imply protection of the symbol; sometimes it protects all other aspects of the product. For example; the packaging system, color and even any unique shape are involved in the law. For instance; the Coca-Cola bottle shape with grip studs is quite unique and is protected under the law. This is because some of these features can be used as a means of keying a product (Giesler & Pohlman, 2003). Sometimes consumers use a certain feature in identifying a product. If the issue being dealt with is the shape, then this trademark is known as the trade dress. This is especially so if the feature confers with a certain aspect that could lead to competition. Several cases in court have used this law to make conclusive decisions.
The reason why trademarks should be protected is because they aid customers in the quick identification of a product and even its source of a given good. Research suggests that consumers look for a certain feature in order to identify a product or service. For instance; one may ignore the fine print on a box of cigarettes, but they use the trademark or trade dress. Moreover, trademarks are utilized by manufacturers as an incentive. This is especially true when it comes to quality. A consumer will only reuse a product that they consider quality or up to standard. Therefore, it is up to the manufacturer to develop their product to meet the needs of the consumer. As such, trademarks are not only useful to a consumer, but the trader uses them as a form of motivation in improving the quality of a product. There is thus a need to invest in the protection of such an weighty and immutable aspect of a product or service. A trademark can be registered in any country.
Sources of Law That Govern Trademarks
Laws that govern trademarks are found in each and every country. They are regulated by the state and federal laws (Jennings, 2006). Initially, the common law of the state was used as the main basis where trademarks were protected. During such times, the law was almost difficult to implement because of a variety of factors. As a result, the congress in the United States of America enacted the first federal trademark law in around 1800. Over time, the law has expanded to cover areas over the restrictions of the common law of the state. Currently, the federal law is the main body with the mandate to provide protection for trademarks. The state common law plays a small role in this law. The results seen after the collaboration of the two has been tremendous in the protection of trademarks.
Prerequisites That a Mark Must Satisfy In Order To Be considered as a Trademark in the United Arab Emirates
Not every mark is considered to be a trademark. As a means of resolving questionable conflicts, a number of prerequisites have been set aside. These are used to specifically identify a mark as a trademark before it is protected. First, a mark has to be distinctive for it to be considered as a trademark (Jennings, 2006). Something is considered as distinct only if it can be utilized to identifying the source of the good or service in question. . Four categories are used to state a mark as distinctive. A mark has to be fanciful or arbitrary, descriptive, generic and suggestive of the product in question. There are levels in these four categories. Each trademark will be protected depending on its overall level.
The term arbitrary or fanciful here implies that the mark in question has no logical relationship with the product. For instance; the word apple has no relationship to the electronic products it advertises (Jennings, 2006). Therefore, an arbitrary mark is one without any underlying relationship to the product. A mark that is considered highly fanciful is protected at all costs. That is why trademarks like apple, Kodak and Exxon are considered of high esteem.
Synonymous to the word, a mark is considered suggestive if it evokes or suggests a certain feature of the underlying product (Jennings, 2006). A typical example in this case is the word “Coppertone”. This word suggests something like protection from the sun which gives that copper tone. It, therefore, may relay the information that it is a sun tan cream or lotion or powder. In other words, it is almost impossible to tell the product that is being advertised. A lot of imagination is involved to make out the product. It actually evokes a feeling of curiosity. The word should also not be related to the product in any way. Similar to fanciful marks, the suggestiveness of a mark is used to specify the level of legal protection.
A mark is considered as descriptive if it directly describes a characteristic of a product. The mark should not suggest any feature of the product, may it be the odor, color, quality or even ingredients. For example; the phrase “Holiday Inn” implies a hotel room. Therefore, it cannot be considered as a trademark. A mark that is considered as distinctive is only protected if it has a "secondary meaning." This is because descriptive marks are used to give the manufacturer exclusive rights that could be used as a comparison to determine unfair advantage. A secondary meaning is acquired when the consumer associates a mark with the manufacturer, and not the product. For instance; the phrase coca cola is associated with a beverage company. In case of a problem, the court uses a number of factors to decide if a mark has acquired secondary meaning. The amount of advertising, sale volume, the length of use and the findings of consumer surveys are some of the factors considered.
Another characteristic of a mark is that it has to be generic depending on the underlying product (Jennings, 2006). This describes general category to which the product in question belongs. For example, the term fridge is a generic term for all types of freezing electronic equipments. If a mark is considered as generic, it is not entitled to protection. As such, the mark will only be considered as a trademark if it describes a certain product. For example; if one is selling all types of fridges, then they hold no claim to any of the fridge brands in the shop. Such a generic name is considered quite useful but they cannot be protected by a trademark law. However, brands like Samsung are considered as trademarks. It would be unfair to give a specific manufacturer the authority to claim a generic name.
Acquiring Rights in a Trademark in the United Arab Emirates
There are a number of elements that are looked at to determine whether or not a trademark qualifies for protection. There are two ways to acquire a trademark. First, the company or manufacturer has to be the first one to use the name in the field of commerce. Secondly be the manufacturer has to be the first one to register the mark with the United Arab Emirate Patent and Trademark Office. All the four categories in the above discussion have to be satisfied before the mark is registered as a trademark. For example, the descriptive aspect of the mark must have a secondary meaning. This may take some time, and a lot of patience is required.
Once the mark has been registered, its use generally implies that the specific product will be sold to the public with the trademark attached. Therefore, if a retailer is the first to sell a product like Nike shoes in the United Arab Emirates, then the retailer has acquired the priority to use that mark (World Intellectual Property Organization, 1997). This is based only in connection with the sale of that sneaker with the Nike mark. However, this is only limited to the geographic area. In case the retailer needs to expand this right, then they would have to sell the product in other markets. They also have to make sure that they are the first to sell the product. So, for example, if the retailer sells Nike sneakers under the name “Nike Sneakers”, then nobody else will have claim to such a name in that area with his shop (Bently & Sherman, 2008). However, another person can use the same name in another area where the retailer has not conquered yet.
One may also acquire the right to a mark by registering it. In the United Arab Emirates, this is stated in the terms of Article six. This article specifies the people who are allowed to register for a trademark. They can be foreign persons with the licence to carry out commercial activities in the country. They can also be juridical persons allowed to undertake commercial or industrial activities in the country. In some instances, similar people from countries that the United Arab Emirates conducts its business in are also allowed to register for a trademark. Public juridical people are also placed under the same category. Registering a mark not only allows one to conduct commercial activities in a specific geographic area but also in the whole nation, and sometimes even in other countries. However, this is dependent on whether or not the mark is already being used by others in the same area (Bently & Sherman, 2008). The trademark licence lasts for a period of ten years in the United Arab Emirates. This is different from country to country.
Trademark Infringement
The laws of trademark infringement are almost similar in all countries (Jennings, 2006). Anyone can sue for trademark infringement if they can prove that they own the trademark. The standard complaint is that there may be a propensity of confusion. A situation is considered as an infringement if the sale of a good is used as a basis to confuse customers. This can be determined using the strength of the symbol, proximity of products, the similarity in the symbols and available evidence pointing towards confusion.
Conclusion
After losing economically for a period of time, many countries felt that there was need to protect their originality and creativity. This is what led to the development of the Intellectual Property Law, which is recognized worldwide. Under it, there are a number of laws, trademark creation being one of them. A number of factors are used to consider whether a mark should be considered as a trademark or not. This is almost similar in all countries. In the United Arab Emirates, factors such as unique words, signatures, drawings, names, letters, logos titles, seals, hallmarks and even figures are some of the characteristics of a trade mark. In the same country, a mark will never be considered as trademark if it contains several characteristics. For example; if the mark breaches public morals, it has the logo of any national flag, the name of a third party or confusing names or symbols. A number of procedures are followed when creating this trademark.
References
Bently, L., & Sherman, B. (2008). Intellectual property law. Oxford: Oxford University Press.
Giesler, M., & Pohlmann, M. (2003). The anthropology of file sharing: Consuming Napster as a gift. Chicago: Pearsons.
Jennings, M. (2006). Business: its legal, ethical, and global environment. New York: McGraw Publishers.
Silva, A, C. (2010). Enforcing intellectual property rights by diminishing privacy. Program on information justice and property rights. Research paper number 11.
World Intellectual Property Organization (a). (2008). “What is copyright?” property magazine Retrieved June 07, 2013, from http://www.wipo.int/freepublications/en/intproperty/450/wipo_pub_450.pdf
World Intellectual Property Organization. (1997). Introduction to intellectual property: theory and practice. New York: Pearsons.
