Trade marks: complementary to patents

Javier Rujas

The O�ce for Harmonisation in the Internal Market, Technical Cooperation Division, Avenida de Aguilera, E-03080 Alicante, Spain

Abstract

The way in which trade marks can reinforce the protection provided to patented goods, and in a sense prolong the protection

originally provided by the patents, hence contributing to the ®nancial return obtained on the patented inventions, is explained. The

synergism between the patent and the trade mark protection which helps to establish the trade marks, and to create a relationship of

trust between the producer and the consumer is explored. Also mentioned are some of the bene®ts o�ered by trade mark information

in providing commercial insights to complement the information obtained from patents, together with an outline of the di�erent

ways in which trade marks can be registered in Europe. Ó 1999 Elsevier Science Ltd. All rights reserved.

1. Introduction

Clearly, it is nothing new to talk about trade marks inconnection with patents. Any basic course on industrialproperty explains that, basically, industrial propertyrights consist of patents, trade marks, models and in-dustrial drawings or, to use the term more commonlyemployed in community legislation, design.

All these forms of industrial property are a responseto the existence of various ``objects'', the protection ofwhich contributes to the technical and economic devel-opment of society. We can see straightaway that patentsand trade marks protect completely di�erent aspects ofthe ``objects''. Patents, of course, protect inventionsembodying technical improvements, while trade marksprotect distinctive signs. If we use the sequence``idea ® research ® development ® production ® pro-motion ® sale'' to describe in general terms the stagescoveredduringthecreationofanewproductandits launchonthemarket,patentsgenerallyrelate to theearly stagesofthe sequence ± idea ® research ® development ± whiletrade marks are associated with the later stages of pro-duction, promotion and sale. Stated another way, thismeans thatpatentsrelate tothescienti®candtechnologicalaspects of the process and trade marks to the more com-mercial aspects.

In order to be patentable, inventions must be new,must involve an inventive step and must be susceptibleto industrial application. Furthermore, they must notcontravene any of the express prohibitions for paten-tability. In order to be registered as trade marks, dis-tinctive signs must be capable of being represented

graphically and be capable of distinguishing the goodsof one manufacturer or dealer from those of others.Moreover, they must not give rise to any of the absoluteor relative reasons for refusal.

However, the right provided by a granted patent or aregistered trade mark is, in essence, quite similar ± atemporary monopoly allowing the owner to use theprotected product commercially and to prevent othersfrom doing so. We use the expression ``temporary mo-nopoly'' because both forms of protection have timelimitations from the date of the application for protec-tion or registration ± normally 20 yr in the case ofpatents and 10 yr in the case of trade marks, althoughthe latter, unlike patents, can usually be renewed in-de®nitely.

Monopolies are somewhat of a contradiction in amarket-based system since, by placing the owner in anadvantageous position, they give rise to a restriction offree competition. Is this a question of unfair competi-tion? As far as patents are concerned, the reverse is thecase as, in addition to giving the inventor the opportu-nity to obtain a return for the e�ort put into creating theinvention, patents encourage fair competition betweenthe patentee and others who can read the publishedpatent and develop their own separate solutions duringthe currency of the granted patent, or compete directlyat its expiration. Neither is it a case of unfair competi-tion in trade marks. Although the monopoly corre-sponding to a trade mark does bene®t the owner, it alsobene®ts the consumer. The market system and freecompetition would not exist if consumers could notchoose between goods and/or services produced by

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di�erent companies and this can only happen if thecompanies concerned use their registered trade marks``exclusively'', i.e. under a monopoly.

The owner can produce or import the object of thepatent himself or authorise others to do so under licenceand, more importantly, can prevent third parties fromdoing so. The ®nancial consequences of exercising thisright should, in principle, be that the inventor is able torecover the investment he has made and also receives anadditional ®nancial return for his technical contributionto society.

Similarly, the owner of a trade mark has the right tothe ``exclusive'' use of his trade mark on his goods orservices, or can authorise others to use it under licence,and more importantly, can prevent others from doingso. The ®nancial consequences of this right should bethat the manufacturer of the product or provider of theservice receives a ®nancial return for having distin-guished their goods or services from those of othermanufacturers or service providers.

In the case of both patents and trade marks, a ®-nancial return is not automatic. Whether or not theowner receives a ®nancial return, and how much, doesnot depend so much on the owner or on the state whichhas granted the title, or on the inherent worth of theinvention or of the distinctive sign. It depends, basi-cally, on the reaction which the patent or the trademark is capable of producing in the market, amongconsumers.

In today's society, publicity plays an enormouslyimportant role and is usually focused more on the trademark than on the technical features of the product. It isclear that, although the process between the birth of anidea and the granting of the patent is much more in-teresting from the technical point of view, the subse-quent marketing of the product can, however, be of vitalimportance.

2. Financial return

As mentioned earlier, under the patent system, theinventor or owner does not automatically earn a ®nan-cial reward. In the case of an inventor, the system pro-vides an automatic moral reward- his right to bementioned as the inventor in the patent document andpublications related to it. But this moral reward has lostmuch of its signi®cance in contemporary technology-oriented society, in which inventions are rarely the resultof the e�orts of a lone inventor, and has less e�ect as faras encouraging innovation is concerned. Innovation willbe encouraged if the patent owner receives ®nancialcompensation which allows him to recoup the expenseshe has incurred in relation to his patent, encouraginghim to pursue his research work and enabling him tostart investing in his next invention. Obviously, this is

fairly di�cult if the patent does not have su�cientcommercial success.

The philosophy of the system is overwhelminglylogical ± only those inventions which are truly useful tosociety will be rewarded. How can we know if an in-vention will be truly useful to society? When consumers,once they know about the invention, are prepared to payan appropriate price for it. We must not forget that in afree market society, practically everything can be boughtand sold. It is here, in this phase of earning a ®nancialreturn, that trade marks can complement or help pat-ents.

If it is the owner of the patent himself who is re-sponsible for selling the product, the choice of a gooddistinctive sign to mark the patented goods and the useof this sign as a basis for publicising them can, to a largeextent, a�ect the ®nancial return which can be earned. Ifthe owner of the patent is not going to be responsible forselling the product he must choose companies which heconsiders technically able to sell the product, and whichare well positioned in the market, and will do so, in alllikelihood, on the basis of the good name or renown oftheir trade marks. Depending on requirements and onthe sales strategy used, the sale of the patented productcan be carried out under one of the registered trademarks owned by the selling company or under a newlycreated trade mark.

3. Trade marks: trust between producers and consumers

A relationship is created between the manufacturerand the consumer through the use of the trade mark,mainly in the sale and distribution of trade markedproducts, but also in the publicity which uses the trademark. This relationship is basically a question of trust,generally linked to questions of quality. Consumers buygoods from a speci®c manufacturer because its trademark indicates a particular level of quality, both in theproduct itself and in its presentation and distribution.By ``a particular level of quality'', we do not meansimply that the consumer buys goods whose marks insome way indicate a high quality. Consumers choose thelevel of quality which suits them best, depending on theirparticular preferences and requirements, and are guidedby the corresponding trade marks to choose and buy acertain product.

This relationship of trust is only broken if the man-ufacturer fails to keep to its side of the relationship, i.e.if it unexpectedly or unjusti®ably changes the quality ofthe product, the system of distribution or the price, or ifthe consumer drops out of his side of the relationship,i.e. changes his preferences or requirements. There areother causes for a change or breakdown in the rela-tionship or trust created by the trade mark ± such as theintroduction of a new product with greater bene®ts than

36 J. Rujas / World Patent Information 21 (1999) 35±39

those already on the market or the appearance ofcounterfeit goods.

However, once a relationship of trust has been con-solidated between manufacturer and consumer, it isfairly hard to break.

4. ``Extending'' the life of patents

In general, the maximum life of a patent is 20 yr.Once this period expires, the patent falls into the publicdomain, i.e. anyone can legally make use of it, and freecompetition returns once more.

If, however, during those 20 yr, the patented goodshave been properly trade marked and if, by using pub-licity, this trade mark has become established amongconsumers, it is possible in e�ect to ``arti®cially'' extendthe protection provided during the life of the patent byvirtue of the reputation established in relation to the trademark, which can be considered as a ``quasi-monopoly''which is certainly de facto, if not actually de jure.

Moreover, the advantage provided by the monopolyunder the patent can help, to a great extent, to consol-idate the trade mark of the patented products. Duringthe life of the patent, the product can be launched andposition itself on the market without having to competewith others, which helps it to establish the relationshipof trust between the manufacturer and the consumerthrough the product's registered trade mark.

This is a much more favourable situation than thatfaced by unpatented products since there cannot be anyidentical or similar products to distract the consumers'attention from the patented product and its trade mark.Once the patent monopoly expires, competing compa-nies not only have to improve on the technical featuresand price of the product which has fallen in the publicdomain, but they must also overcome the relationship oftrust represented by the trade mark.

A good example of this is the product ASPIRINmanufactured by BAYER. In most countries, ASPIRINis a BAYER trade mark for a pharmaceutical product,which is basically composed of acetylsalicylic acid, andwhich is especially useful as a treatment for the relief ofpain, particularly headaches. Originally, this pharma-ceutical product was patented, but the monopoly ex-pired some time ago. However, while the patent was stillin force, BAYER managed to use the ASPIRIN trademark to establish a strong relationship of trust betweenthe pharmaceutical product and the consumers. Thisrelationship continued after the invention came into thepublic domain. At present, even though this pharma-ceutical product can be manufactured by any producer,the public often tends to prefer the original product andBAYER, even though it no longer has a legal monopolythrough its patent, can be said to have a de facto quasi-monopoly.

5. Patent information and trade mark information

For some time now, the patent information sector hasbeen a growth area, and is in fact continuing to thrive.For many years, the technical information contained inpatent documents had been practically ignored by thescienti®c, technological and industrial sectors. Thestandardisation of patent records, together with the in-troduction of improved data processing tools, has madeit possible to bring the store of technological informa-tion contained in patents to the light of day.

Obviously, trade mark information does not have thesame technological value as patent information. Trademark applications do not contain a description, orpractical examples, or claims or drawings. At ®rstglance, the only point where there is any similarity as faras the information contained in patent documents andtrade mark applications is concerned are the claims inthe former and the list of goods and services in the latter.These claims and lists of goods and services perform theimportant function of de®ning the scope of the right.

Although trade mark information does not help us tocomplete the technological information obtained frompatents, it is however a great help in analysing the ®-nancial and commercial aspects of such information. Atpresent, by using patent information technology servic-es, we are able to ®nd out, for example, about the sub-jects and technical areas on which companies areworking, the current ``status'' of the technology, and theleading companies in applied research. However, theseservices provide little, if any, information concerning thecommercial value of this patented technology, i.e. itsimpact on the market.

As far as trade marks are concerned, the equivalent ofthe patent document disclosure is the publication of thetrade mark application in the relevant o�cial gazette.Taking the Community Trade Marks Bulletin as anexample, Fig. 1 shows the amount of information givenfor each application.

From all this information, considered both individ-ually and collectively from a statistical point of view, we

Fig. 1. Information on each application recorded in the Community

Trade Marks Bulletin.

J. Rujas / World Patent Information 21 (1999) 35±39 37

can extract important information about the marketingof the patented product.

Recapping on the nature and purpose of the initialregistration, if the aim is to protect the patented productby means of a trade mark, it is necessary to choose asuitably distinctive sign to establish the relationshipbetween the manufacturer and the consumer. Therefore,before submitting an application to a trade mark o�ce,it is advisable ®rst to carry out a search in the corre-sponding trade mark register, either to compare theproposed sign with those which already exist, or to ob-tain guidelines for the creation of a new sign. Both trademark o�ces and the private sector o�er this type ofservice at a reasonable price, certainly at a lower pricethan the cost of applying for a trade mark.

On the basis of this information, the owner of thepatent can assess the chances of success for the distinc-tive sign he has chosen once he applies for its registra-tion as a trade mark, and also, by comparing it withthose which already exist, the impact which it mighthave on consumers. In the same way, moreover, thatpatent information can be used to establish the ``tech-nical'' activity of companies, so trade mark informationcan be used to establish their ``commercial'' activity.

Furthermore, it is possible to identify patents whichare a commercial success, since, with only a few ex-ceptions, patented products which have a true eco-nomic worth are protected on the market by trademarks as well as by their patents. We can also identifythose sectors of commercial activity in which compa-nies are operating on the basis of their registered trademarks, or the sectors in which they plan to carry outactivities in the future on the basis of their trade markapplications.

In order to access this information, which is basicallycontained in the list of goods and services given in thetrade mark or the application, we use the InternationalClassi®cation of Goods and Services for the Registra-tion of Trade Marks (Nice Agreement). Trade markinformation, like patent information, provides us withinformation on the applicant or owner or his represen-tative, which can be useful for entering into negotiationsor establishing contact.

Finally, trade mark information enables us to identifyavailable distinctive signs. The distinctive signs corre-sponding to lapsed trade marks can normally be re-registered by anyone, including the former owner of thelapsed trade mark.

6. Protection by trade marks in Europe

At present, Europe, and more speci®cally the Euro-pean Union, has three di�erent systems for the protec-tion of goods and services by means of trade marks ± thenational trade mark system, the international system

and the community trade mark system. This situation isvery favourable to the applicant, since the applicant canchoose whichever of these systems best suits his or herbusiness strategy.

The national system involves the ®ling of an appli-cation in a national o�ce in the language of that o�ceand, possibly, designating an authorised representative.The protection obtained will only apply in the territoryof the country in question. If the applicant wants to usethe national route for more than one country, the pro-cedure described is used in each of the countries inquestion ± various applications ®led in various nationalo�ces, in various languages, designation of variousrepresentatives, etc.

One solution to this problem could be internationalregistration. International registration, which is admin-istered by the World Intellectual Property Organisation(WIPO), under the terms of the Madrid Agreement/Protocol, on the basis of a national registration or ap-plication, provides trade mark protection in the memberstates of the Agreement/Protocol. The languages forinternational registration are French or French/Englishas speci®ed in the Agreement or Protocol. Protection byinternational registration is not automatic in all thestates belonging to the system. On the one hand, theapplicant must indicate in the application in which stateshe wishes his international trade mark to be valid, andon the other, the national o�ces of the designated statesmay refuse the international trade mark for theircountry. In addition, not all states are party to theAgreement.

The community mark system is the most recentlycreated system. It came into being on 1st April 1996.This is a regional system for the registration of trademarks in the European Union. The community trademark system makes it possible for an applicant to sub-mit:

· one application;· in a single language (chosen from among the 11 o�-

cial languages of the European Union);· to a single o�ce (the O�ce for Harmonization in the

Internal Market (OHIM));· using a single payment system (paid in Euros);· with a single representative (where applicable);

in order to obtain a unitary registered trade mark, thecommunity mark, which is valid in all 15 countries ofthe European Union. In other words, from a morecommercial point of view, a mark which is valid in asingle market comprising more than 370 million con-sumers, with a buying power which is one of the highestin the world. Furthermore, the community trade marksystem provides the additional advantage that it doesnot require the trade mark to be used in all the memberstates. It is su�cient for it to be used in any part of theUnion.

38 J. Rujas / World Patent Information 21 (1999) 35±39

7. Conclusion

We have seen how trade marks can reinforce theprotection provided to patented goods and in a wayprolong the life of patents, contributing to the ®nancialreturn obtained on patented inventions. We have alsopointed out how patents can help to establish trademarks, and to create the relationship of trust betweenproducer and consumer.

We have also mentioned some of the bene®ts o�eredby trade mark information by providing commercialinformation as an adjunct to the information obtainedfrom patents.

And ®nally, we have given a brief outline of the dif-ferent ways in which trade marks can be registered inEurope.

I hope that all of this has encouraged you to considerprotection by patents from a somewhat wider viewpoint,looking at the subject from a commercial point ofview in addition to examining the purely technicalaspects.

In particular, I hope to have encouraged you toconsider trade marks when marketing patented productsor as an addition to patent information.

J. Rujas / World Patent Information 21 (1999) 35±39 39