Justifying the Trademark Registration Regime

Tracing Origins[1]

Merchants have been using unique insignia on their goods since ancient Greek and Roman times. This was done mainly to inform buyers and other traders of the origin of their goods and to distinguish them from those manufactured by others. This practice was implicitly respected in the merchant community and guilds[2]. But for a long time, they possessed no justiciable right, except under the law of fraud, against any misappropriation of their merchandise marks.

The first bill on TM protection was tabled in the UK Parliament in 1861. At its first reading, Lord Chancellor John Campbell cautioned that “it had of late years become extremely common to forge the mark of a successful, eminent, and celebrated manufacturer, thus not only depriving him of the profits to which he was justly entitled, but bringing disgrace on him in addition; Because the articles thus imposed on the public with false marks were generally of an inferior quality and of a fraudulent nature”[3]. He further remarked that the remedies of injunction and damages were at best dilatory, expensive and uncertain. However, this bill lapsed.

In the Select Committee of 1862, solicitor Joseph Travers Smith severely criticized the prevailing legal environment because: “trade marks are not recognized of having any legal validity or effect; there is no written law on the subject… we have… no definition of by which we can… know what symbol amounts to a trademark[4].” Consequently, the Trade Marks Act, 1862 was enacted. It criminalized the intentionally fraudulent use of trademarks. However, this Act was found to be inadequate since liability was entirely dependent on conclusive proof of intent to defraud. It also failed to recognize property rights in a trademark.

Advent of the Register

The Chairman of the Select Committee Mr. John Arthur Roebuck, MP had in fact proposed the incorporation of a registration system for trademarks in the 1862 bill; but this was negatived. Finally, the UK Parliament gave fruit to this proposal and enacted the  Trade Mark Registration Act, 1875. This was the first legislation providing enhanced rights to trademark users based on a registration system. It also created a classification of goods. The tort of infringement was created. This legislation sought to save registrants from the effort and expense of proving exclusive use of and ownership in their registered mark(s). To that effect, the burden of proof shifted from a registered trademark owner to the alleged infringer.

Soon enough, the Paris Convention of 1883 provided for a similar registration mechanism. This was aimed at strengthening domestic protection to foreign marks and to curb the counterfeiting of goods.

Benefits of Registration

Jeremy Phillips has remarked that regardless of the merit of a country’s trademark laws, “the true excellence of a trademark system is judged by the quality of its administration and not merely by the quality of its laws[5]. Furthermore, he has defended the registration system in saying that even if a trademark application takes a long time to process, it needs to take more time than people imagine[6]. This is because the register performs crucial functions in protecting proprietary marks.

In Myles Ltd.’s Application[7], a few of its functions were enumerated by the Office for Harmonization in the Internal Market (OHIM):

  • It enables prospective applicants to see if a mark has already been registered
  • It allows competitors to see which insignia cannot be legally used by them.
  • It provides prospective licensees with details as to whom they should approach for a license to use a mark.
  • It supplies inspiration to those who wish to create an effective TM and aids those who wish to study the manner in which others achieve this.

The Million-dollar Justification

In light of the facts stated, issues raised, authorities cited and arguments advanced,  my justification of the TM registration regime is as follows:

The registration system was created and is so maintained today for the purpose of administrative, judicial and commercial convenience. This system made it easier for trademark users to be recognized as owners and for their unique insignia to be respected as property. Over several amendments in municipal laws and international treaties, it has decontextualized and refined trademark law with precise and all-encompassing definitions of ‘trademark’. Most importantly, the requirement of registration has established a centralized and publicly available trademark database. The former has in fact achieved the true telos of a trademark as noted by the OHIM in Myles Ltd.’s Application. Moreover, trademark statutes nevertheless conform to the common law system insofar as they disallow the registration of confusingly similar and deceptive marks.

Today the registration system has grown into an organic legal mechanism. Both trademark law and its registration system have harmoniously evolved right alongside rapid developments in technology, branding, markets and consumer behavior. On the other hand, the traditional common law remedy of passing off remains a tedious, uncertain and expensive endeavor. And any of the above would have indeed been a far cry if trademarks were left exclusively to the mercy of common law; even though it has a larger ambit of protection.

Therefore, it would only be an understatement to say that trademark registration has now become an axiomatic function for a smooth functioning of the modern business environment.

This post was originally written shortly after the conclusion of the ILS National IPR Seminar in 2016 but remained unpublished till date.

[1] For a detailed discussion, See, Lionel Bently “The Making of Modern Trade Marks Law: The Construction of the Legal Concept of Trade Mark (1860-80)”, Trade Marks and Brands, Cambridge University Press. A draft version of this essay is available here.

[2] See, Scheter, The Historical Foundations of the Law Relating to Trademarks (New York: Columbia University Press, 1925)

[3] Hansard, (1861) 161 Parliamentary Debates 328 (February 12, 1861)

[4] Select Committee, Q. 2619 (Travers Smith)

[5] Jeremy Phillips, Trademark Law, A Practical Anatomy, Oxford University Press, 2003, para 3.01 at page 37.

[6] Ibid, at para 3.04 on page 38.

[7] Case R 711/199-3, 5 December 2001, OHIM

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