Your Trade Mark - The Revenue Stream You Didn’t Know You Had

 Your Trade Mark - The Revenue Stream You Didn’t Know You Had

Raquel Le Blanc

 

From that post-doubles Solo to the fried chicken Colonel himself- the influence of an iconic trade mark is undeniable. 

 

Conventional trade marks are letters, words, names, logos, phrases, packaging, signatures, numerals, devices, brands, headings or labels that distinguish a business’ products from others,^[1] often encapsulating its identity. With a glance, they communicate quality, reputation, expectation, incentivize repeat purchases and solidify consumer trust.[2]

 

A reputable trade mark is a lucrative investment. It can be licensed at a fee, sold or used to collateralise loans. It is an additional source of revenue in its own right, distinct from the actual sale of goods and services. 

 

This capacity for monetisation makes trade marks prime targets for abuse. Competing brands can thrive off of the confusing similarity of their trade marks and products with those of market leaders to boost sales with minimal financial or creative investment. 

 

A cheeky case in point: when Mario’s Pizzeria- a Trinbagonian staple since the 1970s- vacated one of its outlets, Mariano’s Pizzeria quickly moved into the same location and sold pizza in boxes that resembled Mario’s.[3]  

 

Customers inadvertently went to Mariano’s, thinking that it was Mario’s. One even ordered a pizza from Mario’s but mistakenly went to Mariano’s to collect it. The confusing similarity of name and packaging actually diverted Mario’s sales to Mariano’s. 

 

Mariano’s representative argued that it merely wanted an ‘Italian sounding-name’ but Justice Hamel-Smith found it emphatically clear that Mariano’s specifically chose its name to cash in on Mario’s trade and reputation. 

 

Such emboldened ‘copy and paste’ branding happens quite regularly: you can get an alcohol-free ‘Nosecco’ during a Prosecco hiatus,[4] snack on a ‘Kat Kot’[5] instead of a ‘Kit Kat’ or opt for a ‘Michaelsoft Binbows’[6] if your Microsoft Windows computer crashes. 

 

A business therefore can thoroughly conduct market research to carefully nurture its trade mark, all for its appeal to be butchered by one lazy competitor with a modicum of Photoshop competence. 

 

For this reason, conventional trade marks should be properly safeguarded against misuse and infringement. Our Trade Marks Act No. 8 of 2015 provides robust protection in this regard with a progressive domestic and international trade mark registration system. 

 

While registration does not prevent others from using a trade mark for fair comparative commercial advertising or promotion, non-commercial purposes or news reporting,[7] it creates a statutory monopoly over a trade mark’s exclusive commercial, licensing and franchising use.[8]

 

Proprietors of registered trade marks can also prove infringement relatively easily. Reproducing an identical[9] trade mark with unnoticeable, minute alterations or modifications[10] or using a confusingly similar sign in connection with products identical or similar to those for which the trade mark is registered without the proprietor’s consent[11]constitute infringement. 

 

Much more is required for the owner of an unregistered trade mark to prove infringement under the law of passing off: (a) his business must have goodwill in the infringer’s jurisdiction (b) the infringer must have deceived customers into purchasing his product by using a confusingly similar trade mark and (c) damage was suffered because of this misrepresentation.[12]

 

In the Mario’s/Mariano’s row, Mario’s actually had to adduce evidence of its long-standing existence in the pizza industry in Trinidad, extensive advertising investments and country-wide operations to establish goodwill under the law of passing off. 

 

If the Trade Marks Act No. 8 of 2015 was in force at the time and Mario’s trade mark was registered, pointing to its trade marks’ confusing similarity to Mariano’s would have probably sufficed to prove Mariano’s infringement. 

 

Trade mark registration itself is a relatively uncomplicated process. Any person or attorney-at-law can register a trade mark by submitting the prescribed application form[13] online, by facsimile or physically to the Intellectual Property Office (“IPO”) and paying the prescribed TT$1,400.00 fee.[14]

 

Registration will be refused if the trade mark is identical[15] or confusingly similar[16] to an earlier trade mark[17] and the goods or services for which the trade mark is sought to be registered are identical[18] or similar[19] to those for which the earlier trade mark is protected.

 

Additional grounds for refusing registration include if the trade mark is incapable of graphical representation,[20] not distinctive,[21] is deceptive,[22] contrary to public policy, morality[23] or any law,[24] exclusively references generic characteristics such as quality, quantity, geographical origin,[25] shape,[26] customary language[27] or the application is made in bad faith.[28]

 

Provided there is no such objection to the trade mark, it can be registered,[29] will be valid in Trinidad and Tobago for ten years and renewable for successive ten year periods thereafter.[30] Once registered locally, an international application can thereafter be made through the IPO to register the trade mark in over 123 countries under the Madrid Protocol.[31]

 

Put simply, paying a registration fee every ten years can avoid tedious and costly litigation and the need to prove trade mark infringement under the more stringent law of passing off. 

 

The sweeping export opportunities and sophisticated digital upgrades to our method of commerce catalysed by COVID-19 simply cannot be enjoyed by a tainted or poorly managed brand. 

 

Brand Finance plc Chairman and CEO David Haigh notably observed that during the pandemic, the global economy turned to reputable brands in its hour of need, like gold or fine art during previous recessions.[32] 

 

More than ever before, resilience to uncertainty and market changes is inextricably linked to implementing sound trade mark development, protection and enforcement strategies. As the uncertainty of the pandemic continues to challenge our notions of commerce, it is therefore crucial that we understand the role that conventional trade mark monetisation and protection can play on our road to economic recovery and beyond.  

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[1] Trade Marks Act No. 8 of 2015, s 3(1). 

[2] Eugene C. Lim, ‘The shifting boundaries of fame: well-known trade marks, consumer recognition and augmented reality platforms in the age of COVID-19’ E.I.P.R. 2021, 43(3), 172-180. 

[3] Mario's Pizzeria Ltd v Mariano's Pizzeria & Restaurant Ltd TT 1989 HC 64. 

[4] Re UK Designation of International Registration No. 1398464 Nosecco Label in Class 32 in the name of Les Grands Chais de France Les Grands Chais de France SAS v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco [2020] EWHC 1633 (Ch).

[5] Christopher Hudspeth ‘15 Knockoff Foods That Are Doing Hilarious Impressions Of Popular Products’ (Buzzfeed, 15 October 2019) 

<https://www.buzzfeed.com/christopherhudspeth/knockoff-fake-products-off-brand-cheap-generic?utm_source=dynamic&utm_campaign=bffbbuzzfeedfood&ref=bffbbuzzfeedfood> accessed 27 December 2021. 

[6] Philip Hamilton ‘Michaelsoft Binbows’ (Know Your Meme, 2021) <https://knowyourmeme.com/memes/michaelsoft-binbows> accessed 27 December 2021. 

[7] Trade Marks Act, s 29(4). 

[8] Ibid, s 27(1). 

[9] Ibid, s 28(1). 

[10] Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA (Judgment of the Court of 20 March 2003); Reed Executive plc and another v Reed Business Information Ltd and others [2004] IP & T 1049. 

[11] Trade Marks Act, s (2)(b).

[12] Mario’s Pizzeria supra [12]; New Zealand Milk Brands v Food Basket International Limited, Sime Darby Foods & Beverages Marketing SDN CV2018-02001 [15]. 

[13] The application form can be accessed at <http://ipo.gov.tt/downloads/Trademark/Forms/form_tm2.pdf>. 

[14] Intellectual Property Office- Office of the Attorney General and Ministry of Legal Affairs Trinidad and Tobago, ‘Trade Marks’ <http://ipo.gov.tt/types-of-ip/trade-marks/> accessed 27 December 2021.

[15] Trade Marks Act, ss 9(1), 2(a). 

[16] Ibid, s 9(2). 

[17] Ibid, s 3(1). 

[18] Ibid, s 9(1). 

[19] Ibid, s 9(2). 

[20] Ibid, ss 3, 8(1)(a). 

[21] Ibid, s 8(1)(b). 

[22] Ibid, ss 8(4)(b), 8(7).

[23] Ibid, s 8(4)(a). 

[24] Ibid, s 8(5). 

[25] Ibid, s 8(1)(c). 

[26] Ibid, s 8(3). 

[27] Ibid, s 8(1)(d). 

[28] Ibid, s 8(6). 

[29] Ibid, s 16. 

[30] Ibid, s 19. 

[31] Intellectual Property Office- Office of the Attorney General and Ministry of Legal Affairs Trinidad and Tobago, ‘Madrid Protocol’ <http://ipo.gov.tt/related-links-tm/madrid-protocol/> accessed 27 December 2021. 

[32] Brand Finance plc, ‘Microsoft Overtakes Apple to Become World’s Most Intangible Company’ (Brand Finance plc, 16 September 2021) <https://brandfinance.com/press-releases/microsoft-overtakes-apple-to-become-worlds-most-intangible-company> accessed 27 December 2021.