What is a trademark?
What is a trademark?
Generally, a trademark is a virtually perceptible sign such as name, words, label, symbol or logo which is legally registered and this trademark represents a particular organization, company, product or service to distinguish it from other companies or products. . For instance, there are many companies which produce mobile phones but they all should have their own unique names, symbols, designs of brand and slogans. No other company can use Nokia's slogan “Connecting People” or same font design to make a similar name. This is because Nokia has registered legally for all those components as the part of its trademark. By doing this, Nokia can prevent other companies creating similar trademarks. Speaking about “sign”, this means that even sounds (e.g. Metro Goldwyn Mayer's “Lion Roar”), smells (e.g. “Royal Desire” perfume by Christina Aguilera) are also registered as trademarks. To register a trademark, this must be a sign which must be devoid of any distinctive character, must not be descriptive of quality of goods or services and it must be a generic word, i.e., the word must not be from the dictionary.
Other forms of intellectual property protection
- Layout-Design of Integrated Circuits
- Geographical Indications
- Trade Secrets
- Confidential Information
- Plant Variety
Patent is a right given to an inventor to enable him or her to protect their invention from other people using where else design refers to form, style and arrangement. This means only inventor can have the rights to use the creation. However, it is extend only throughout Singapore for only 20 years depending on payment of annual renewal fees.
Package of rights given to creators of software and arts such as novels, songs is copyright.
Layout-design of IC (integrated circuit) is technically prevention against copying the design of a certain owner's IC arrangement and IC interconnections. It is illegal to copy registered IC layouts without permission.
Geographical indication which is a sign that points out the original location from where the certain product comes out. Some fake products or companies may print similar or same geographical indications on their products leading the public to think that infringement party is the same as the original party.
Trade Secret is the confidential information safely kept for business which is not publicize.
Plant Variety Protection enables the breeder of the plant to protect others from producing, reproducing, selling, trading, putting in stock, or conditioning the plant variety.
Difference between Passing off & Trademark
In a case of trademark, the owner has the right to exclude all other businesses from using similar trademark after the owner has registered it legally. If another organization or individual copy this trademark in any way, can be sued under Trade Mark Act of Singapore. Infringements can be in different ways, for example, same product with same name, similar product with same name, similar/same name with different product.
However passing off is a right that protects the brand and the goodwill in a business or the way in which a company does its business and the way they serve the consumers.
A company can have passing off claim if and only if they can present:
- Goodwill: Initially, the business must have reputation.
- Misrepresentation: There must be some confusion and deception caused to the public, i.e., the public has mistaken the infringement with the original owner.
- Damage: The plaintiff must have lost reputation, profit and/or opportunity to expand business.
Importance of protecting a business mark/ brand name
Every famous company or organization has a unique brand name and trademark of its own. This is because, if their trademark is very general, people can use it without worrying the trademark infringement law. Public will become unsure of what a particular brand is about or their trust on the product will be lost. On the other hand, this brings a big loss in owner's investment for his product or company.
For the other party, there will also be a loss in reputation and money to pay for if they lose the appeal in trademark infringement.
Moreover, when the company or organization is ready to produce their products but they have not register a trademark of products, other competitor might register first. This can result in the former costing to pay compensation for the latter and can also result in withdrawal of the products they have produced.
Noodle owner loses trademark case
Mr Tang Chay Seng, 63, the owner of a famous bak chor mee (minced meat noodle) outlet in Crawford Lane sued his nephew for trademark infringement.
Mr Tang had claimed that his nephew, Mr Arthur Tung Yang Wee, 39, had used his pork noodles business as being linked to the Crawford Lane one. Justice Tan Lee Meng dismissed Mr Tang's claims as he feels that Mr Tang only did not allow Mr Tung to use the name “Lau Dai Hua” for his stall at VivoCity.Mr Tang wanted this law suit as he wanted to stop his nephew from damaging his reputation of his stall in Crawford Lane.
As Mr Tung had passed off his pork noodles as Mr Tang's, there was a 'likelihood of confusion' as a result of this, added the judge. As Mr Tang cannot provide evidence that his goodwill was damaged, Justice Tan awarded him only $1,000 as compensation. There were also no similarity in visual trademarks as Mr Tung's signboard has Japanese and Korean characters and a graphic depiction of a mythical creature called pi xiu, representing a winged lion, on both sides of the Chinese characters while Mr Tang's has a suspension bridge head and “Tai Hwa Pork Noodle” with graphic depictions.
Cisco sued Apple for trademark infringement on the usage of “iPhone” on their new cellular phone.
Before Cisco sued Apple for trademark infringement, Apple knew Cisco own the trademark since 2000 and Apple approached Cisco starting on 2001 several times but before Cisco agree to let Apple use “iPhone” as their product name, Apple went ahead to name their product “iPhone”.
In the end both company came to an agreement and so Cisco has dismiss the legal action regarding the trademark case against Apple Inc. The agreement was to allow Apple to use “iPhone” for their cellular phone name. In exchange, they are going to be “interoperable” meaning work together between companies' products in the areas of security, consumer and business communications.
We feel that the $1,000 compensation is not enough as Mr Tung has copy the idea of selling bak chor mee from Mr Tang. Although the trademarks visual are different, the name of “Lau Dai Hua” is still the same and can cause confusion to the public as they might think that the stalls in VivoCity and Crawford Lane are from the same owner and are branches. Since the case was dismissed, I think that Mr Tang and Mr Tung should work together and combine the two shops together and make them as branches or Mr Tung should get a distinctive name for his stall and should make public announcements using posters and other that his stall is not a branch of Mr Tang.
Our opinions on this trademark case are that Cisco stands a higher chance on winning as they had registered “iPhone” as their trademark for their voice over IP phone. In term of Singapore law this case falls under Trademark Act Section27 (1) misrepresentation due to same name on same product. This might have affected consumers on the market thinking Cisco VoIP phone “iPhone” belong to Apple, since Apple used “iPod” and “iMac” for their product naming.
Although Cisco had the upper hand of winning, they chose to dismiss because it was more advantageous for them to work on the long term investment rather than getting compensation from Apple. Also Alan Fisch, an intellectual-property lawyer at Kaye Scholer in Washington said Cisco also faced the reality that consumers recognized the name more with Apple.
We think that Cisco made a good choice by dismissing the case as it was more a gain than loss. Both Cisco and Apple get to use “iPhone” and they get to work on their product.
Impact of two cases on consumers and businesses
For both the high profile trademark case found, it was similar to most of the case that companies do not want their trademarks be use by other or people riding on their trademark to do well in business because if there is no uniqueness in the product and selling point, companies can be heavy damage in reputation and loss of earning.
Another impact would be the confusion among consumers and they would buy the wrong products. They might spread the wrong information about company product that is does not up to their expectations and company reputation will be affected.
For the bak chor mee case, Mr.Tung( the nephew) loses his reputation as he used his uncle's Culinary Skill Awards to promote his Vivo City Stall. He even advertised the awards together with the stall in Chinese newspapers without his uncle consent. This might cause loss of respect from customers. Although $1000 is a small amount of money for a business like this, it is not good for the nephew's business as people might recognize the case and he might face difficulty when promoting his stall. This case also leave a bad impression of Mr Tang showing that he is quite selfish as an elder person because he should have discuss and settle things with his nephew before suing him in court.