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Protecting trademarks
In order for the unauthorised use of a mark to be actionable, the use must occur in relation to products or services which are the
same or similar to the products or services in relation to which the owner's mark is used or registered. In the case of certain marks
which are sufficiently 'well known', infringing use may also occur where the use occurs in relation to products or services which
are not the same as or similar to the products or services in relation to which the owner's mark is registered.
A trademark is 'protected' when a trademark owner may prevent or stop unauthorised third parties from using the same or confusingly
similar marks, usually by relying upon the exclusive rights which result from holding a registration for the owner's trademark.
In addition to the trademark registration systems which exist in most jurisdictions, many jurisdictions (especially Common Law countries)
also provide protection for trademarks which have not been registered, such as through the tort of passing off.
Unauthorised use of a registered trade mark need not be intentional in order for infringement to occur, although damages in an infringement
lawsuit will generally be greater if there was an intention to deceive.
Consumer protection and confusion
One of the public policy objectives given for trademark law is consumer protection, that is, to prevent the public from being misled as
to the origin or quality of a product or service. A trademark owner also uses trademark law to prevent unauthorised third party use of
a mark which is identical to the owner’s mark, or which is so similar that use of the other party’s mark would result in a likelihood
of confusion.
For example, a computer manufacturer other than Apple which makes products using the APPLE trademark, or a soft drink manufacturer which
calls its product 'Popsi' (in imitation of the PEPSI trademark; although the similarly does not need to be this close) may amount to trademark
infringement where the owner holds a trademark registration.
By identifying the source of goods or services, trademarks help consumers to identify their expected quality and assist in identifying goods
and services that meet the individual consumer's expectations. Trademarks also fix responsibility. Without trademarks, a seller's mistakes
or low quality products would be untraceable to their source. Therefore, trademarks provide an incentive to maintain a good reputation for
a predictable quality of goods. For example, a consumer that purchases and likes Nabisco Premium saltines has a reasonable expectation that
Nabisco Premium saltines found anywhere in the United States will be of uniform taste and quality. Failure to maintain consistent quality
can lead to abandonment of a mark, when the law will no longer protect the trademark because it has ceased to function as an indicator of
a particular product. Marks may also be abandoned by "naked licensing", which involves the owner granting rights to use the mark to another
party without sufficiently controlling how or on what they use it. The mark is then released for general use.
Because the emphasis is on consumer protection, the user of a trademark does not "own" the mark in the same way that it may own a copyright.
With some exceptions (see below under Dilution), the protection of a trademark is limited to certain markets, which can be defined by either
the type of product or service, or even a particular geographic area. For example, though "Lexis" and "Lexus" are confusingly similar marks,
using the former for an news and information service and the latter for luxury cars means that the public is not likely to confuse one while
looking for the other, and so neither can restrict the other's use. A trademark may also be limited geographically, if it can be determined
that products or services do not compete because of the physical separation of their markets. Considering the national and even global nature
of most manufacturers and distributors, the reach of print and broadcast advertising, and the disregard of the internet for geographic
boundaries, this limitation is likely to be an issue in fewer and fewer cases. The market-specific limitation is not interpreted strictly.
Instead, attention is given to how closely related markets are (such as pancake mix and pancake syrup), or how likely it is that the mark owner
will "bridge the gap" and move into the other product or geographic market.
Related Topics
What is a Trademark | Trademark Definition
Registrable trademarks
Trademark - Comparison with patents, designs and copyright
Trademarks and Domain Names
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