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Re: Trade and Service Marks



> It would help me if you could spell out the protection and approx costs
> related to getting Trade and Service Marks.

Below is a copy of a background paper I circulated some while ago to the
informal IPR Working Group. In the UK the current fees are 225 pounds for an
application, plus a renewal fee of 250 pounds after 10 years, and further
renewal fees of 275 every subsequent 10 years (though by the time you get 10
years down the track, the fees will almost certainly have increased). That
is per trade mark. Fees elsewhere are  likely to be comparable, so the cost
of registering in, say, UK, USA, the Eurpean Union and Australia would be of
order 1000 pounds per decade.

Regards
Brian

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Trade Marks
-----------
The following text is extracted from "Croner's Guide to I.T.", published
by Croner Publications Ltd, and refers predominantly to UK law.
 
     A trade mark is defined as a special mark placed on a particular product
     to distinguish it from similar products sold by other suppliers. Trade
     marks are registered for goods or services. When applied to services,
     the term "service mark" may be used.
      
     The relevant legislation in the UK is the Trade Marks Act 1994. Trade marks
     may be registered at the Trade Marks Registry; a registered trade mark
     becomes the property of the individual or company in whose name it is
     registered. No other person may then use the trade mark in relation to the
     goods within the specified categories for which registration has been
     obtained without the owner's permission.
      
     Trade marks are registered for a period of 10 years; the registration is
     renewable indefinitely at further 10-year intervals.
      
     Trade marks valid across the EU can be registered at the Community Trade
     Mark Office in Alicante, Spain.
      
     The principal right given to an owner of a trade mark is to use the mark in
     relation to goods in the class for which the mark is registered. Trade
     marks may be infringed where a sign is used in the course of trade:
       (a) in relation to goods or services where the sign is identical to those
     for which a trade mark is registered;
       (b) where it is identical to the registered mark and is used on similar
     goods to those registered and where there is a likelihood of confusion;
       (c) where a similar sign is used in relation to identical or similar
     goods to those registered and where there is a likelihood of confusion;
       (d) where an identical or similar sign to that registered is used in
     relation to goods or services which are not similar to those for which the
     mark is registered, where the mark has a reputatation in the UK and use of
     the sign, without due cause, takes unfair advantage of, or is detrimental
     to, the distinctive character or repute of the trade mark.
      
     The effect of these provisions is to give broad protection in order to
     prevent others using the same or similar marks in their businesses in
     a similar area. In some circumstances (where there is an associated
     reputation in trade or commerce) the effect is to prevent use of the
     mark in other business areas.
      
     A company wishing to incorporate a product in other products, or to use a
     trade mark on goods which are not produced by the owner of the trade mark,
     must be wary of providing grounds for action against trade mark
     infringement. Protection against such action is secured through obtaining
     permission from the trade mark owner, and optionally entering into a
     registered user agreement which may be registered at the Trade Marks
     Registry. Such a registered user agreement is intended to confer on both
     parties the benefits accruing from use of the trade mark, and usually
     contains provisions governing the quality of goods which are produced
     upon the trade mark.
      
     Infringement will usually involve the use of a sign similar to or identical
     with a registered trade mark, in relation to goods or services similar to,
     or identical with, the goods or services for which it is registered.
     Defence against an action for infringement may include the use of a mark
     where it is necessary to indicate the intended purpose of a product or
     service, but to constitute a legal use it must be "in accordance with
     honest practices in industrial or commercial matters".
 
 
Comment: The above description, is characteristic of the practice of invoking
a trade mark as a design stamped on goods of substance. The use and
application of a service mark is more abstract, and perhaps requires further
investigation.
 
In some respects the term "CIF" would seem better protected by a service mark;
the entity for which protection is sought is the description of a file format
rather than the physical content of a file. It would need to be established
that the IUCr is indeed providing a "service" to individuals through their
use of the protocol defining and describing the data files that they create,
whether manually or as a product of a software program.
 
One could envisage some benefits to entering upon "registered user agreements"
with certain other parties in the use of CIF. For example, such agreements
between the IUCr and, say, PDB or CCDC could be used to ensure a certain level
of quality in CIFs delivered by any of those organisations. On the other hand,
the administrative overhead of such a mechanism would not be acceptable to
individual users or small software developers, and so adoption of a registered
trade mark should be accompanied by a clear announcement of the conditions
under which it is legitimate for a producer of a data file to associate with
it the name of "CIF".
 
The IUCr would be vigilant against possible infringements of the types (b) and
(c) listed above, i.e. where the word "CIF" or a similar term were used to
describe data files that did not conform to the description and rules
published by the IUCr. Since the IUCr wishes to establish CIF as a community
standard, it would not envisage taking action against a body that produced
files called CIF if those files did indeed conform in all respects to the
published standard (i.e. there would be no action for infringement under type
(a) above). (d) is also largely irrelevant - the IUCr would have no interest
in the term "CIF" as used in other area of software or science.
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