Is it lawful to use someone else’s trademark?
Trademark is a very valuable non-property asset along with other intellectual property objects,. But its value is underestimated in our country. Thus, trademark facilitates your products (goods or services) identification by consumers, prevents confusion among consumers, is one of the most effective marketing tools, and is also the basis for brand and reputation development. Ensurance of the product distinctive ability is one of the main trademark tasks. So the question whether it is possible for identical trademarks to coexist arises. The answer for this question is yes in case:
- the same mark applies to goods and services which, according to the Nice Classification, belong to different classes;
- identical marks are registered in different countries (as trademark is protected if it is registered in a particular territory. Registration of a trademark in one country does not automatically applies to other states);
- there is no marks confusion.
However, even if the above conditions are met, registration of the identical mark will not be possible if it is well-known.
In addition, the provisions of the Paris Convention for the Protection of Industrial Property shall be taken into account. Pursuant to Convention Parties are obliged to provide efficient protection from unfair competition, including by prohibiting all actions which can cause confusion between enterprises, products, commercial activity of the competitor. That means that there is a possibility of abolition of a similar trademark registration in another country, where your trademark was not registered. But for this provision realization your trademark should have “protective elements”, i.e. not to be commonly used word, to be in color, in special type, etc. There are a lot of examples of cancellation of trademarks, which were registered in other countries, and then illegally used and registered in Ukraine.
So how is it possible to legally use a trademark registered by another person? The current legislation provides two ways: the transfer of mark ownership (in whole or in part concerning the part of goods and services specified in the certificate), as well as the issuance of a license to use the mark. In any case the written agreement shall be concluded, signed by both parties, and registered.
In case information on ownership transfer is published, state duty is paid, Ukrpatent issues a new certificate
It is necessary to take into account who owns the trademark when concluding such agreements.
If trademark belongs to several persons, the agreement regulating relations between co-owners must be concluded. In case there is no such agreement, trademark transfer or license for trademark use is possible only in case there is a consent of all co-owners. In addition, current legislation allows to transfer rights on trademark application. Such agreement shall be registered in Ukrpatent.
Very often question on similar trademark registration arises. In some applicants’ opinion, it is possible in case trademark owner provides his/her consent for this. Such possibility is provided by legislation of some countries, but in Ukraine such consent have no legal force in case existence of two similar trademarks can cause customers’ confusion.
Another important aspect is that appearance of rights on trademark is connected with trademark registration. Therefore, if you use your unregistered trademark, your rights are not protected by law. It means that another person can register your trademark and in this case you can only obtain a right of previous user (i.e. to obtain a right to use trademark, but not to allow or prohibit its use by other persons).
Thus, you have to check whether there are similar registered trademarks and apply for trademark registration before using it. In case there is identical registered trademark, the best option is to conclude agreement on trademark transfer or trademark licensing, or to change mark to extent eliminating the identity of the marks.