The main difference between a trademark and a geographical indication is that, while the former is a sign that a business concern (whether physical or moral person) uses to distinguish its own goods or services from those of competitors, the latter is an indicator that certain products have a regional origin which is certain. All the producers in that region are allowed to use the geographical indication. For instance, “Mountain” can be used by all honey farmers in the Cameroon Mountain area but if any of the producers has registered the trademark “XTRA” for its honey, only that producer can call its produce “XTRA” Mountain Honey.
Secondly, while only one undertaking can use a trademark registered in its name and address, every undertaking in the same region are allowed to use the same geographical indication.
Thirdly, while a trademark can be a letter, a word, numerals or simply a number, or a combination of letter(s) and numbers, an abbreviation, a name, a device or figurative element, a hologram, a sound or a smell, a geographical indication can only be a politico-geographical name (a place).
Fourthly, while a trademark can claim its colour features, a geographical indication would not claim any such thing.
Fifthly and finally, while a deceptive geographical indication can be incorporated in a trademark and render the trademark deceptive, the reverse is not practical in that a deceptive trademark cannot implicate a geographical indication in the same way if the geographical indication is not in itself deceptive.
TRADEMARK REGISTRATION UNDER THE MADRID AGREEMENT
In the main, there are two requirements for a trademark to stand out as one and be registered under the terms of the Madrid Agreement, to wit: a) it must be distinctive and b) it should not be deceptive. It is rather interesting that while the former requirement is recommend in a trademark, the latter, if found in a trademark would be frowned at.
A trademark is distinctive if it makes the goods and/or services of the enterprise, distinguishable from the goods and/or services of its competitors. For example, “Le Boxeur” is a good trademark which Fotso Victor has used to distinguish his matches from other matches. True enough, he wants to say that when you strike his stick of match it lights instantly, just like a good punch from a boxer would send his opponent dazed. Yet, in fact boxing has nothing to do with the striking of matches. On the contrary, “Le Boxeur” would not be a distinctive trademark for the entertainment services rendered by the boxers of a promoter of boxing for, other promoters ought to be allowed to use the term “Boxeur” to describe their services too.
So we could now just add that one of the characteristics of a trademark is that it should not be descriptive.
When an undertaking claims that the goods for which its trademark is used have certain qualities (or quantities) when in fact they don’t, the trademark is said to be deceptive and this, to the utter detriment of the uninformed consumer. This is why we say advertising should be void of hoax for, trademark is a form of advert. For instance the trademark “100% cotton” for dresses that are not made of pure cotton would be said to be deceptive. In the same vein, there are dressmakers in Douala who sew shirts and print on them “Made in Paris”. This is a clarion example of a geographical indication which renders the trademark deceptive.
The process for registration of a trademark under the Madrid Agreement is a straight forward affaire though a little intricate in that the trademark must first be registered in the country of origin of the applicant with nearly no exception. The only scenario that looks like an exception is if the international application is made exclusively under the protocol, in which case, at least the owner must have filed an application for registration in his home country.
After this initial requirement the applicant has to file for international registration with the international bureau of WIPO based in Geneva and in this application he must name the countries in which he intends to protect his trademark. WIPO then checks whether the application is in consonance with the formalities prescribed by the law. It also vets the lists and classes of goods and services to make sure it conforms to the Nice classification. If everything is in order, WIPO registers the mark and forward the application to the designated countries. At the level of each individual designated country, an examination for such things as distinctiveness, deceptiveness and/or conflict with existing trademarks, may be carried out and this may result in refusal of the protection. And whether the protection is refused or accepted in the individual country, the International Bureau must be informed formally.
To have a trademark known and respected in the market place needs time and money. This is why a trademark is considered personal property, however incorporeal it may be. Protecting such property therefore becomes of utmost interest.
INTELLECTUAL PROPERTY DEFINED
Intellectual property is the corollary of creative genius, invention for short. The early man was the first person to ever invent anything but then intellectual property was not an issue and this because his inventions, though new and original, involving an inventive step, were not industrially applicable and more importantly, he would not market the product of his inventions.
The convention instituting the World Intellectual Property Organisation (WIPO) signed in Stockholm on 14/7/1967 states that intellectual property refers to the rights with respect to:
Intellectual property is a blanket term covering copyright and industrial property.
Literary, artistic and scientific works pertain to copyright. Such works include poems, novels, music, paintings, sculpture and cinematographic works. Copyright has “allied or related rights” such as those regarding the interpretations of interpreter- artists, the execution of executor-artists, phonograms and radio transmissions.
Inventions, industrial designs and models, trademarks, service marks and trade names pertain to the industrial property branch of intellectual property. The protection against unfair competitions can also be included within the ambit of industrial property for, according to article 1(2) of the Paris convention for the protection of industrial property “the repression of unfair competition” is one of the objects of “the protection of industrial property”. This convention states in clear terms that “all acts of competition contrary to honest usages in industrial and commercial matters is deemed to be an act of unfair competition”. The other objects of industrial property include: patent, utility models, geographical indications and appellations of origin plus the protection of new plant varieties..
From the foregoing, it is clear that industrial property is not a tangible thing such as factory buildings, machines, raw materials. It is rather an intangible reality, more than precious though.
At common law, property falls under two grand categories, to wit: real property and personal property. Real property is property attached to real estate. Personal property in broad and general sense includes everything that is the subject of ownership, not coming under the denomination of real estate. It is a right or interest in things movable.
This includes, but not limited to, bonds, stocks and shares and choses in action generally and intangible property like intellectual property. Indeed the 6th edition of blacks law dictionary divides personalty into (1) corporeal personal property and (2) incorporeal personal property which consists of such rights as personal annuities, stocks, shares, trademarks, patents and copyrights.
Intellectual property right is limited in space and time. That is, it is limited to the region where it is protected (e.g. the 17 countries of the OAPI region) and to the time during which it is protected (e.g. 10 years for a trademark) except duly renewed.
Owing to the growth of trade and industry, intellectual property protection has become a major concern of most governments. According to trademark world, issue 110 of September 1998, “Today, more than one million new trademarks are filed every year”. To me this shows the extent to which each business person wants to make his Mark in the world, protect his identity and maintain his brand integrity.
Cameroon is not missing out in this rising tide of trademark registration. Here, intellectual property matters are handled by the African Intellectual Property Organisation (better known and called by its French acronym OAPI). Its jurisdiction spans 17 central and West African countries mostly of French expression. Cameroon is a special member because it hosts the seat of the organisation.
Since the late 80s Cameroon has been facing major economic challenges calling for the government to resort to vigorous policies of stabilisation and economic recovery. In the light of this, measures to restructure the industrial sector, privatisation and the liberalisation of trade have been put in hand with the aid of multilateral donors and lenders. For short, it is a question of re-establishing an environment economically attractive for both local and foreign investors. The mechanism of industrial property has contributed in a rather efficient way to this economic dynamics for, by instituting a regime of protection for its different constitutive elements (patents, industrial designs and models, trademarks, service marks, trade names…) and in assuring the repression of unfair competition, it has helped in the consolidation of a legal and regulatory framework liable to entice investors and enhance trade and industry. This accounts for the present growth rate of over 5% the Cameroon economy is proud of.
For this we say bravo to OAPI at the regional level and WIPO at the global level.
One of the hurdles on the way of intellectual property registration is that trademarks can clash. Well, once you are not sure of the originality of the mark of your new product or service, you have to eliminate the chances of your mark being opposed after registration by asking a search to be conducted a priori. At OAPI, this takes only days and the report takes weeks to reach you. Trademark world says compu-mark with customer service departments in Antwerp, London and Paris has the identical screening searches (or ISS searches) which offers a series of tools to help find a name to wit: KISS for a country, RISS for a region and WISS for a global view of the whole world.
The ISS database allows you to examine almost 14 million trademarks published for the first time since 01/01/76 in some 200 countries worldwide. Everyday, approximately 5000 new trademarks are added to this database.
The ISS searches will find all identical trademarks and, following application of the compu-mark phonetic rules, paraphonetically identical trademarks. This information, available within 24 hours, will be an invaluable aid in the trademark search strategy.
Once a trademark search outcome is positive, the mark is registered and it may with the passage of time become famous. Famous trademarks enjoy greater protection and may even be protected in countries where they are not exploited. As soon as a trademark achieves a good degree of recognition and distinctiveness, it transcends the wares and services with which it is normally associated. There is this commercial reality that trademarks are often migrated into new products which may have little similarly to the original product for which the trademark became known.
The fame of a trademark is not an all or nothing proposition. It will be simplistic to divide trademarks into two classes: the famous and the not famous. Trademarks occupy a continuum, from those which are virtually unknown to those which are instantly recognizable by nearly everyone. The virtually unknown trademarks get known progressively through advertising and other promotional activities such as the sponsorship of sports and cultural events. Guiness Cameroon S.A. sponsors the Mount Cameroon race annually. SITABAC in 1997 sponsored the building of the Douala CRTV-radio station. Tobacco companies all over the world promote their trademarks by like sponsorship.
But since cigarette smoking complicates health and government is most aware of this, some governments surtax cigarettes. For example a packet of cigarette in the UK cost more than £3.00 and the percentage of the tax making it so expensive goes to sponsor health programmes. Other governments ban Tobacco companies from undertaking certain promotional activities. For example, the government of Canada set a plan to phase out tobacco sponsorship for sports and cultural events. This ban would occur over five years in order to allow event organizers to find alternative funding. At this rate the future trend may be for the trademark for Tobacco companies becoming an endangered species.