By: Jeetu Kanwar
INTRODUCTION
World Intellectual Property Organization (WIPO) is the body which has setup certain rules and regulations for governance of Intellectual Property (IP) services throughout the world. It mainly includes 193 countries which are part of United Nations. [1]
Trademarks are part of such intellectual property. It simply helps to differentiate between the goods of the manufacturers. It helps to distinguish goods with similar or identical owners. Also through trademark one is able to protect his intellectual property. It confers legal rights upon the owner of the trademark.
Here comes the role of trademark laws. It helps to protect owner of the trademark. An owner can bring a legal action against the other person who causes trademark infringement. Such personal is liable for punishment. The owner of trademark can take legal action which is both civil as well as criminal action. Thus the person is liable to be punished with fine or imprisonment or both.
Different countries have their own regimes of trademark laws. They are governed by various laws and have different set of rules and regulations to counter trademark infringement. This makes the rules to differ from country to country and region to region. Thus there are several blend of regulations making trademark laws unique in nature.
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In this write-up trademarks laws of following countries are explained and a parallel analysis is drawn for a better understanding:
- S.A
- A.E
TRADEMARK LAWS IN USA
In its basic essence trademark law in the USA is made to protect and distinguish goods made by one person from that of another manufacturer. This helps to protect and differentiate similar kinds of goods and to give due credit to the producer. In the USA most of the service marks originate from their use and thus are totally identical from their mere use in different setups. In order to protect the mark, it is always suggested to either register the trademark with the federal government and if that is not possible then the mark should mandatorily be registered with the state government to avoid any kind of misuse or infringement.[2]
A trademark in the USA is infringed when another person uses the same mark in a manner such that it likely causes confusion among the common masses. Several people can use mark but only when it doesn’t cause any confusion among common people. [3]
Next thing to consider here is about the procedure to register the trademark in the USA[4]
All the application with regard to the registration of trademark needs to be moved to the United States patent and trademark office. After this application, the trademarks are checked for their resistibility. If a mark is found eligible for registration and fulfills all the criteria then it is published in the official gazette. In the case of use based applications, they published and if are not opposed then registration is issued providing detail of the expiration period.
In the case of intent use based application, a notice of allowance is issued which is valid up to a period of three years from the issue of the notice of allowance. After which registration is issued.
An application for registration must include the following:
- It should include the name and address of the owner who wishes to register.
- It should include the applicant’s citizenship or residence or place of organization.
- It should include details of the goods on which the mark needs to be used.
- It should include the details where the mark was first used.
- It should include a declaration that needs to be signed and the application needs to reveal the specimen and drawing of the mark.
- It should include the meaning of the words which are not in English.
- It should also include a claim declaring a prior use of the mark which the applicant is trying to register in order to ascertain whether anyone else is using the same.
- It should also include a fee for the goods which come under the category of international goods.
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After due verification and completion of the application for registration of a trademark, the United States Trademark and patent office mails the certification of the registration to the owner of the trademark.
TRADEMARK LAWS IN UAE
Government of UAE has taken strict measures and provisions for the protection of their intellectual property especially trademark. There are stringent provisions for the regulation of trademark laws in UAE. Trademarks in UAE are protected by Federal Trademark Laws, which ensures proper supervision of trademarks and their misuse.[5]
REGISTRATION AND INFRINGEMENT OF TRADEMARK IN UAE
A trademark is widely used to distinguish between goods of one trader from that of another.[6] Registration of trademark in UAE is done by forwarding an application to the trademark section of the ministry of economy and commerce. After due completion of application and procedure for registration, the trademark is registered with the ministry. If in case any other person or organization or other entity uses the same registered trademark then it will amount to trademark infringement.
In this, the owner of the trademark can file a suit or take legal action for trademark infringement. Thus such trademark infringement is liable to be punished and the owner of the trademark can claim compensation for the same.
The trademark law also provides criminal remedies for trademark infringement which is in terms of imprisonment or fine or both. One can also take action against trademark infringement through the means of Dubai customs which filters the trademark infringement cases and products which infringe the trademark. This makes the trademark protection of products more efficient and well protected.[7]
Thus to ensure the rights over a trademark, it is important to register your trademark in UAE. This protects business innovations through the means of a trademark.[8] The registration of a trademark provides validity and protection in case another person copies or uses the same trademark which is similar to yours. If your trademark is not registered in UAE then you cannot take legal action against another business and enterprise.
TRADEMARK LAWS IN GERMANY
All German trademark applications need to be filed at the German Trademark and Patent Office (DMPA).[9] German trademarks are governed by the trademark act, which is implemented by European Union trademark directives. [10] Trademarks that are not opposed by DMPA and fulfill all the standards are qualified to be registered as a trademark. All German trademarks cover the entire federal republic of Germany[11]
In Germany, there are specialized ordinary courts for enforcement of trademarks infringement. They are also competent to tackle the disputes related to unfair competition and domain name dispute resolution policy.
PROCEDURE FOR TRADEMARK REGISTRATION IN GERMANY
One of the steps for the trademark registration procedure is to publish the trademark in the official gazette for three months. During these three months, anyone in Germany with a similar or identical trademark may file an opposition against the trademark published in the official gazette. No trademark gets an extension from this period of three months.
Opposition to the trademark may be filed by the owner of the already registered trademark or owner of trademark who previously got such a trademark registered. In Germany, a trademark opposition is filed in writing and a nominal fee is to be paid.[12] The German trademark office will see whether the trademark complies with the standards of the trademark.
In Germany trademarks are valid for a period of three years from the date of filing of the application. If the owner wants to do renewal of the trademark then same can be done by filing an application for renewal one year earlier from the date of expiry of the trademark. Also there is a provision of a grace period which consists of six months. In this grace period a renewal application can be filed by paying late fees.[13]
It is mandatory to use the trademark within the five years after registration. If such trademark is not used then it is liable to be cancelled on the ground of non use. Such
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CONCLUSION
Through analysis of trademark laws of different countries, it can be safely concluded trademark registration is of utmost importance. It is vital to know that trademark registration provides various privileges to the owner of the trademark. Registration helps to tackle the problem of trademark infringement.
- Trademark infringement is one such common problem which is prevalent in almost every country. Thus to give due credit the owner of trademark, registration is a must.
- It can be safely concluded that all these three countries have their own set of statutes to govern trademark laws. Though they different rules but all rules have same essence which to punish the wrongdoer.
- Also the procedure for registration of trademark tend to vary when we move from one country to another but the basic outlines which includes publication of trademark in the official gazette remains the same.
- Another key aspect to keep in mind is that in all these three countries trademark is registered for a certain time period and after the expiry of that period the trademark need to be file for renewal.
Thus this analysis of trademark laws is essential in order to gain insight about variety of laws prevalent among other countries. This helps to get better understanding of different laws. Hence it helps to understand all kinds of dimensions of trademark laws.
[1] https://www.wipo.int/about-wipo/en/
[2] https://www.bitlaw.com/
[3] https://www.uspto.gov/sites/default/files/documents/tmlaw.
[4] https://iclg.com/practice-areas/trade-marks-laws-and-regulations/usa
[5] http://diazreus.com/protecting-your-trademark-in-the-uae
[6] https://www.wipo.int/edocs/lexdocs/laws
[7] https://www.mondaq.com/trademark/736132/new-trademark-application-procedures-in-uae
[8] https://www.dlapiperintelligence.com/goingglobal/intellectual-property/
[9] https://thelawreviews.co.uk/edition/the-trademarks-law-review-edition-3/
[10] https://www.worldtrademarkreview.com/portfolio-management/trademark-procedures-and-strategies-germany
[11] https://iclg.com/practice-areas/trade-marks-laws-and-regulations/germany
[12] https://www.lawyersgermany.com/register-a-trademark-in-germany
[13] https://igerent.com/trademark-registration-germany