Duhaime's Law Dictionary


Trademark Definition:

A word, name, logo or slogan used by a person selling goods or services to distinguish and identify their goods or services from those of another.

Related Terms: Intellectual Property, Passing-Off, Common Law Trademark, Trade Secret, Nominative Fair Use, Fair Use, Patent, Copyright, Suggestive Mark, Goodwill, Vienna Code

Spelled "trademark" in American English, or as two words in England, Australia and Japan ("trade mark"), and even with a hyphen ("trade-mark") in Canadian English.

The international symbol for a trademark is TM and for a registered trademark, ®.

Trademarks are a form of intellectual property and thus, monopolies granted by the Government and enforced by the Courts to traders or merchants reserving words, slogans, names or symbols (logos) or, in some jurisdictions, surnames (see below), sounds (jingles) or colors (Australia will even allow the trade-marking of a smell), that are used to mark and distinguish the merchant's goods or services from those of others.

Writing in the Duke Journal of Comparative and International Law (Duke University School of Law, Durham, North Carolina, Fall 1998) on the subject of the international protection of trademarks, professor Joanna Schmidt-Szalewski used these words:

"Trademarks are signs that identify goods or services offered on a market. Trademarks are nothing new. For example, ancient Greeks and Romans stamped or inscripted on various goods an identifying symbol or name.

"Today the trademark is a way to attract the public. Consumers look at trademarks to choose goods and services, which increases the role of trademarks in global marketing. The economic value of trademarks in attracting customers requires that firms manage and protect them comparably to other assets."

Duhaime Law - sample trade-markWell-known trademarks include the Coca-Cola and McDonald's logos.

In Caricline Ventures Ltd. v. ZZTY Holdings Ltd., a trade mark was defined as:

 

"(A) trade-mark must be used to distinguish a person's wares or services from those of others. A mark is not a trade-mark if it is not used for this purpose."

By way of further statements of the law on the topic, as it does not appear to be static in this area:

Justice Rouleau of the Federal Court of Canada in Philip Morris Inc. v. Imperial Tobacco Ltd.:

"... the very nature of a trade mark is to permit to distinguish the wares to which it is associated from others. One can also see that distinctiveness requires that three conditions be met: 1) that a mark and a product (or ware) be associated; 2) that the "owner" uses this association between the mark and his product and is manufacturing and selling his product; and, 3) that this association enables the owner of the mark to distinguish his product from that of others."

Chief Justice Fitzpatrick of the Supreme Court of Canada in Re Horlick:

"(A) surname is not necessarily incapable of being a registrable trade-mark. It may be registered for instance where it is as in this instance an uncommon name and its use has been so extensive that in fact it has become distinctive.

"Here the affidavits shew that the trade-mark has been in actual use and that such user has been sufficient to render it distinctive; food products in packages bearing as a conspicuous identifying feature the word 'Horlick' have been sold in the United States and in Great Britain and the Colonies for over forty years...."

In his 2012 article, C. Wilson wrote:

"A trademark is a word, phrase or logo, including a domain name, used by a person for the purpose of distinguishing the wares made or sold by that person, or the services performed by that person, from the wares or services made, sold or performed by others."

REFERENCES & CITATIONS:

  • Caricline Ventures Ltd. v. ZZTY Holdings Ltd., 2001 FCT 1342
  • Philip Morris Inc. v. Imperial Tobacco Ltd., 7 C.P.R. (3d) 254 (1985)
  • Re Horlick, 64 SCR 466 (1917)
  • Schmidt-Szalewski, Joanna, The International Protection of Trademarks after the Trips Agreement, 9 Duke Journal of Comparative and International Law, at page 189 (1998)
  • Wilson, C., An Overview of Intellectual Property, 70 Adv. 361 (2012)

Categories & Topics:


Always looking up definitions? Save time with our search provider (modern browsers only)

If you find an error or omission in Duhaime's Law Dictionary, or if you have suggestion for a legal term, we'd love to hear from you!