Trademark Law: Historical Development and Application (Research Paper Sample)

Trademark Law: Historical Development and Application
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The Historical Development of Trademark Law
A Trademark is a phrase, word, graphic symbol, or logo that is used by the producer or seller of a product, to distinguish their products from others in the marketplace1. Trademark law primarily serves to distinguish the source or origin of competing goods and services. In the context of intellectual property, Trademark rights prohibit the manufacturer or seller of similar goods from using the same source-distinguishing mark, but do not prohibit them from producing identical goods2. The proprietor of a Trademark also has a perpetual monopoly over the mark. Therefore, the Trademark protection grants the proprietor significant economic power. By distinguishing his or her products, the seller is able to establish a customer base once buyers learn of the quality of their product which increases sales and profitability. The higher profits result from the consumers’ willingness to pay a higher price in exchange for quality guarantee and lower search costs3.
In addition to serving the distinguishing function and acting as a badge of origin, Trademarks also serve an advertising and investment function. Trademarks are instrumental in product promotion and, therefore, serve as an effective tool of advertising. Also, the process of acquiring a Trademark involves a considerable investment. Moreover, the Trademark draws customers to the proprietor’s goods or services and helps preserve their loyalty. This represents goodwill which is a valuable intangible asset4.
[1 OXFORD DICTIONARY OF LAW (9th ed. 2017), trademark2 Verena Von Bomhard, Concise European Trademark Law (Kluwer Law Intl 2018)3 John Mercer, 'A Mark Of Distinction: Branding And Trademark Law In The UK From The 1860S' (2010) 52 Business History accessed 27 February 20194 See John Mercer (p26)]
The use of Trademarks dates back to the 2nd Century BC in the Roman Empire5. Roman brick makers used stamps for the purpose of identifying their products. The “Potters mark” was also used by Romans and Greeks to identify, and indicate the origin and destination of vessels. In ancient Egypt, symbols were carved on artefacts to indicate their religious origin. Over time, the use of symbols to distinguish products became increasingly common. Farmers or ranchers marked their animals to distinguish what animals belonged to whom, while craftsmen inscribed their names or unique symbols to identify the goods they made. The first commercial use of Trademarks began in the 10th century when the “merchants mark” appeared6. The merchants mark was a kind of proprietary mark used to prove the ownership of goods whose owners could not be traced or identified.
As craft and merchant guilds began emerging around the 12th century, logos or symbols were largely used to identify their work and goods respectively. Also known as “production marks7”, the symbols were used to distinguish the guilds from the makers of goods of low quality. Low quality goods included those made using poor quality materials, short in length or weight, or those made with inferior craftsmanship. Moreover, they served as the basis of identifying manufacturers who did not meet the guild’s standards and to punish them. The use of production marks was obligatory for every guild member. In Britain, the Bakers Marking Law8 was passed in 1266. The law ruled over the use of pinpricks or stamps on loaves of bread.
[5 THE HISTORY OF TRADEMARK LAW accessed February 27, 20196 See https://www.iip.or.jp/e/e_publication/ono/ch2.pdf 7 See https://www.iip.or.jp/e/e_publication/ono/ch2.pdf 8 Bakers Marking Law, 1266]
The law was followed by the Silversmiths Marking Law9 of 1363, which required all silver smiths to mark their wares. The idea of used marks to identify products soon spread to other parts of the world to indicate product origin. Although, a Trademark system based on proprietary rights did not exist then, the marks or symbols used in medieval Rome, Greece and Egypt had similar characteristics to modern-day Trademarks10.
The case of Southern v How11, 1617 established a more concrete basis of the application of proprietary rights. A producer of clothes had gained reputation by putting his marks on the clothes he made, but the marks were used by another to deceive customers and make profits. The court ruled that “nobody has any right to represent or pass off his goods as the goods of somebody else. Previously, Trademarks prevailed as common law marks but the case set an important precedent that courts used to determine cases of infringement of rights over goods and services. The Merchandise Marks Act12 was passed on 7 August 1862 to deal with offenses relating to Trademarks and trade descriptions. The Act criminalized the copying of another merchant’s mark for personal gain. It prescribed that every person who “forges any Trademark or falsely applies to goods any Trademark or mark so nearly resembling a Trademark as to be calculated to deceive…shall be liable to imprisonment for a term not exceeding two years or to fine, or to both13.”
[9 Silversmiths Marking Law, 136310 THE HISTORY OF TRADEMARK LAW accessed February 27, 201911 Southern v How (1617) 12 Merchandise Marks Act, 1862 See also https://www.iip.or.jp/e/e_publication/ono/ch2.pdf13 Merchandise Marks Act, 42 & 43 Vict. C. 49 & c]
The first statutory Trademark law, the Trademarks Registration Act14, was enacted in Britain in 1875. The Act modified the definition of Trademark to “a device, mark, or name of an individual or firm printed in some particular and distinctive manner; or a written signature or copy of a written signature of an individual or firm; or a distinctive label or ticket15.” The 1875 Act also created a formal system of registering Trademarks. To register a Trademark, a proprietor was required to fulfill certain criteria designed to distinguish his or her goods from those of another trader. The Patents, Designs and Trademarks Act, 188316, repealed the 1875 Trademarks Registration Act.
The 1883 Act expanded the scope of registration of Trademarks, allowing “fancy words not in common use” to be registered. It also reduced the cost of application for Trademarks. Further changes to Trademark law were made by the 1888, 1905, 1919, and 1938 Trademark Acts. The 1938 Trademark Act17 introduced the concepts of associated Trademarks, and defensive mark, non-claiming right, and consent to use systems18. The Act also allowed an applicant with only the intent to use a mark to register the mark. On 1 October 1986, the service mark registration system was introduced into law through the 1986 Trademarks Act19. Eight years later, on 10 October 1994, a new Trademarks Act came into force. The 1994 Act was developed to incorporate the European Union’s Trademark Directive 89/10420 into UK law.
[14 Trademarks Registration Act (1875)15 Trademarks Registration Act (1875), Article 1 (b) (i)16 Patents, Designs and Trademarks Act (1883)17 Trademark Act (1938)18 Trademarks Act (1938), Article 9(b)(i)(ii)(iii)19 Service marks were included in the Trademarks Act (1986)20 Council Directive (89/104/EEC) [1988] OJ L 40/1]
The European Community Trademark law developed during the second half of the twentieth century, from implied rules to an elaborate and expansive body of intellectual property laws. The objective of these protections was to facilitate the creation of a single common market in the European Community, that would enable producers of goods and services to increase their market reach and enhance the choice of goods and services for consumers21. The Treaty of Rome, ratified in 1957, created the European Economic Community22 (EEC). One of the objectives of the EEC was to eliminate barriers which divided Europe, and these included trade barriers. There was, therefore, need to harmonize Trademark law throughout Europe through the creation of a single Trademark system. In 1976, a Memorandum on an EEC Trademark was adopted by the European Community Commission. The memorandum stressed the importance of a harmonized Trademark scheme. The European Council then issued a draft directive in 1980 for the harmonization of European Trademark law which was discussed by the European Parliament and member states. Changes were made to the draft, and a new draft was issued in 1985. This was discussed further by a working group with representatives from the EEC member states. The European Council issued the first Trademarks Directive, 89/104, or the Harmonization Directive, on 21 December 198823.
[21 TIMOTHY BLAKELY, 'BEYOND THE INTERNATIONAL HARMONIZATION OF TRADEMARK LAW: THE COMMUNITY TRADEMARK AS A MODEL OF UNITARY TRANSNATIONAL TRADEMARK PROTECTION' (Pdfs.semanticscholar.org, 2019) accessed 27 February 2019.22 Treaty of Rome creating the European Economic Area (1957)23 First Council Directive 89/104 of 21 December 1988 to Approximate the Laws of the Member States Relating to Trademarks, 1989 OJ. (L 40) 1]
Important to note is that the Council Directive was primarily aimed at approximating and harmonizing the Trademark laws of member states, and not to establish a law governing issues relating to Trademarks in the European Union (EU)29. The EU member states were only required to revise their individual Trademark laws to comply with the requirements of the 89/104 Council Directive. They (member states) would however enforce their national Trademark laws. The Directive also outlined the requirements for Trademark registration that would be followe...