Probably, trademarks are the most “tangible” of intellectual property rights, as they are an important element in taking decisions on which products to buy or services to receive. As such, trademarks have different functions:

1. -they refer to the origin of the product or the service;
   

1. -they have a quality component, as they assist consumers in taking decisions on which product to buy or not to buy (hence repeating a positive experience, or avoiding another negative one);
   

Legally speaking, a trademark is a sign that is able to distinguish the products or services of one undertaking from the products and services of another undertaking.

A great many trademarks have their roots in the name of their founder. In days gone by, however, it was often kings and emperors that made the name of a product well-known. An example of this is Bacardi, which nowadays is the standard when speaking about (Cuban) rum. The brand’s breakthrough came in 1892, when the six-year-old Spanish crown prince, Alfonso XIII, was taken ill with a heavy bout of influenza. As a last resort, the royal doctors served up a dose of Bacardi to the young prince. Alfonso fell into a deep sleep and in the morning the power of the fever had been broken. After that the drink was described by the Spanish Court as ‘Bacardi, el rey de los rones, el ron de los reyes’ (Bacardi, the king of rums, the rum of kings). This certainly was a worthy advertising slogan.

Under modern trademark law, a ‘trademark’ has to satisfy a number of conditions in order to be protected as a trademark; these are explained in the following. The procedures that have to be followed before trademark protection can be granted are dealt with in the following chapter.

Article 15(1) of the TRIPs Agreement provides that ‘any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark’.

These signs can include: words including personal names, letters, numerals, figurative elements and combinations of colors as well as any combination of such signs. Under article 2 of the First European Trade Mark Directive, trademarks can be formed by ‘any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of [an] undertaking’.

Signs capable of being represented graphically. A first condition for being protected as a trademark is that the sign must be capable of being represented graphically. Consequently, in the first instance, the sign must be visible.

In a number of countries, it is sufficient to file a description or designation of what the holder wishes as a trademark. Thus, the Metro-Goldwyn-Mayer Corp. was granted protection in the United States for ‘a lion roaring’. In June 2000, following a courtroom dispute that had lasted more than six years, Harley-Davidson Inc. brought an end to its fierce attempt to file the characteristic sound of its V-Twin common crank pin motorbike as a trademark, with the trademark application foundering against the ardent protest of the predominant competitors of the company, which had brought similar motorbike as a trademark, with the trademark application foundering against the ardent protest of the predominant competitors of the company, which had brought similar motorbikes onto the market. At the same time, scent marks were accepted in the United States.

Capable of distinguishing. Under European trademark law, this requirement means that the sign must serve to distinguish the goods or services of one undertaking from the goods or services of another undertaking. This criterion contains both an objective and a subjective element.

The subjective element means that the aim of the user must be to use the sign as a means of distinction for his goods or services. The objective element requires that the sign must be suited for distinctive purposes and that the public coming within the scope of consideration must twig the user’s intention and comprehend the sign as a trademark. The manner in which the user displays the sign can affect the public’s understanding.

The distinctive power of a trademark is by no means a constant. Thus, a trademark that initially possessed inadequate distinctive character may over time become distinctive, in which event the trademark is said to be generally perceived as a trademark. By contrast, a trademark can lose its distinctive character if it degenerates into a typical name or descriptive indication for the item.

Mere descriptive trademarks generally cannot serve as a trademark for the products or services they refer to. Therefore, the word mark “APPLE” is considered to be descriptive when used in relation to fruit; on the other hand, if it is used in order to distinguish certain types of computers, it can indeed constitute a strong “brand”.

Other ways to protect certain “signs” in Europe.

Trade Names. A trade name means the names used by undertakings to identify the undertaking, as distinguished from trademarks which identify certain goods or services as those produced or provided by a specific person or undertaking. According to Article 8 of the Paris Convention for the Protection of Industrial Property of 20 March, 1883 (as amended), “a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”.

Geographical Indications and Appellations of Origin. A geographical indication consists of a sign identifying goods as originating in the territory of a Member State or a region or locality in such Member State, and possess qualities, a reputation or other characteristics of such goods that are essentially attributable to that geographical place of origin.

Geographical indications are protected on international and national levels. An appellation of origin is a special kind of geographical indication, used on products that have a specific quality and characteristics exclusively or essentially due to the geographical environment in which the products are produced, including natural and human factors. The concept of geographical indication encompasses appellations of origin.